PTO Implements Final BPAI Appeal Rules

PatentLawPic362The PTO has announced implementation of “final rules” that govern the procedure of ex parte appeals before the PTO’s Board of Patent Appeals and Interferences (BPAI).  A year ago, I commented on the rise of of “technical rejections” of appeal filings. Most of these involved issues such as failing to list non-appealed claims; failing to include an appendix page (even if you have no appendix); and the use of a section headings that varied (in form but not substance) from the required heading. In my 2007 sample of 720 appeals, I found that a full 25% had been rejected as ‘defective’ based on these formalities. [Link]

With this large number of defective briefs in mind, the BPAI developed the new rules:

A major objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board, along with the resulting delays in application and appeal pendency. The requirements of the amended rules are believed to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required, thereby minimizing, if not eliminating, a need to hold appeal briefs defective.

In reality, the new rules appear to significantly increase the number of formalities.  This increase in formalities will likely increase the time required to prepare an appeal. The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.

Some changes:

  1. The most substantive change may be the requirement that non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI. “Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered.”
  2. Instead of filing a summary of the invention, the applicant must file “a claims analysis.” This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed.”
  3. 30 page limit for the Grounds of Rejection, Statement of Facts, and Arguments. (14 point font).
  4. A complete appeal brief will include each of the following (in the correct order):
    • Statement of the real party in interest,
    • statement of related cases,
    • jurisdictional statement,
    • table of contents,
    • table of authorities,
    • [reserved],
    • status of amendments,
    • grounds of rejection to be reviewed,
    • statement of facts,
    • argument, and
    • an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section.
  5. new grounds of rejection are no longer permitted in an examiner’s answer,
    the examiner’s response to a reply brief is eliminated,
  6. petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,
  7. petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and
  8. a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

Appeal Rules PDF

244 thoughts on “PTO Implements Final BPAI Appeal Rules

  1. I am not and have never been an examiner but have been a patent prosecutor for many many years. IMO rejecting properly does/should not take long, just some good searching and good combinations of prior art with a few sentences of explanation. Rejecting improperly (over-rejecting) is what must take time, trying to creatively cobble references together and figure out how to justify combining them, and when worst comes to worst, discounting the novel or non-obvious elements/limitations using some bogus 112 rejection or using the rejection du jour which is to call that element/limitation which is in the body of the claim an “intended use” or “functional” limitation and thereby accord it no patentable weight, i.e. ignore it in the patentability determination.

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  2. “Everything seems obvious in hindsight.”

    Not true.

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  3. When I first started at the Patent Office, I did think I failed when I couldn’t reject all the claims. It took some time for me to realize that my failure to find something in the prior art was not necessarily a failure – it might just mean that something was patentable. It takes time for examiners to learn that obviousness is more than just finding all the disparate pieces in the prior art.

    The problem for practitioners is that KSR, which many (especially new) examiners believe requires a conclusion of obviousness when all the disparate pieces are found in the prior art, was decided at a time when so many new examiners are being brought in. Think about it – perhaps KSR would have had much less of an effect during prosecution if the Patent Office was doubling in size at the same time.

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  4. 6k,

    I continue to argue all the time even though some dependents were indicated as allowable. I’ll continue unless I’m convinced that I have no valid argument. I’ve appealed where I have dependents with allowable subject matter (although that may be somewhat dangerous).

    Why roll over and give up if I’m right? When I say I’m ‘right’ I mean that the art flat out doesn’t say what the Examiner claims it does, even under the broadest unreasonable interpretation used by the pto. Or, the examiner has combined references that are not at all properly combinable.

    You really seem to be suffering from the examiner bias of “nothing is patentable.” Everything seems obvious in hindsight.

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  5. “In any case, I’ve got to start allowing more things, not because there aren’t proper rejections to be made, but that rejecting this sht properly takes so much more work than what I’m supposed to be putting in.”

    Dennis, can you take this quote and put it permanently at the top of the page? I think it will save us all a lot of time over the long run.

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  6. Oh, and when I say something is finaled, it doesn’t mean that they just need to move up some deps to have it allowed since I’ve indicated IN AN OA probably ~5 applications as having allowable subject matter in a dep if it was moved up. So far, I haven’t had anyone take me up on an offer in an OA, but then again most of those 5 haven’t come back yet.

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  7. “For some reason, I suspect that you deal with electrical arts. If so, your allowance rate is really low… It’s usually software and business methods where the examiners are hardasses who won’t allow anything.”

    I agree, and I agree because those examiners aren’t finding sht for art, as most of you allege on here everyday. A rough but fairly accurate breakdown is thus:

    135 applications reviewed (I had meant to say ~150 before, my bad, still I believe you will think the allowance rate to be low).
    7 applications allowed. I have made around 7 non-finals one of which was later expressly abandoned, and all but three of which is now past RCE. I issue non-finals generously, i.e. anytime when there is any reasonable doubt as to if I laid the case out appropriately.
    Over 60% of applications amend after non-final, of the ones left out, about 32% are amended after final, the rest are appeals or allowances.
    Of the 60% amended after non-final some 90%+ will go on to be finaled.
    In the end I’ve had 1 appeal filed, and 3 appeals conferences, the appeal went forward and should be affirmed as it seems solid, and two of the appeals conferences had the spe’s/conferees suggesting that I reopen/allow because they were not convinced, one on a procedural issue, and one on an issue of art. The rest are either pending their filing of an appeal or have RCE’d and have been counted as a new case. I have recieved at least 15 RCE’s (probably more like 20-30) and have 3 abandonments. There are many finals that are solid that are pending and should be RCE’s shortly.

    I recieved 5 RCE’s in the last 3 weeks (takes 1-2 to show up in Edan after they snail mail it) and that is just the tip of a huge final iceburg that hit months ago and should have replies back within 3 months at the latest.

    In any case, I’ve got to start allowing more things, not because there aren’t proper rejections to be made, but that rejecting this sht properly takes so much more work than what I’m supposed to be putting in.

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  8. Well said Mad P. We are dealing with a cartel at the PTO. Except this cartel is moooronic because it only causes harm and does not cash in like the smart, and even mediocre criminals.

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  9. Prosecutor, I’m sure I don’t fully understand the problem. I read this blog in an effort to understand it better. I write stuff to provoke others into writing, so I can learn even more. Thanks for the answer.

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  10. Lowly:

    While there is much truth in what you say, I have also seen a large drop in allowance rates for mechanical and electrical cases. Especially mechanical – the Examiners state “no unexpected results” without performing any analysis and realizing that KSR does not apply (MPEP 2143 is a good place where the Examiner should, but does not, start). Further, the Examiners think that regardless of whether the reference teaches away, etc., as long as there are “no unexpected results,” the analysis ends there.

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  11. Mad Prosecutor,

    I’d like to see the allowance rate broken down by art unit. I think it’s somewhat artifically brought down by the PTO’s violent hatred of software and business methods which probably have allowance rates less than 10%.

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  12. Max:

    I don’t think you fully understand the problem – when the Patent Office carefully applied TSM, the allowance rate was well above 60, 70%. In these post KSR days, coupled with unofficial mandates from management to severely restrict allowance, the allowance rate is 44% and drastically falling. It has nothing to do with the non-use of PSA (again, I worked doing concurrent prosecution in the U.S. and dozens of other patent offices throughout the world – in each case, I modified my TSM advantage/disadvantage into problem/solution terms, and received allowances in those foreign patent offices).

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  13. especially business methods. i don’t think i would ever counsel a client to try. the prevailing attitude at my firm is don’t bother with business methods, you won’t get a patent.

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  14. 6K, only 6 allowances out of 150 applications. What happened to all other 144 applications? Abandoned? Appealed and therefore not decided yet?

    For some reason, I suspect that you deal with electrical arts. If so, your allowance rate is really low… It’s usually software and business methods where the examiners are hardasses who won’t allow anything.

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  15. 6K writes that only 6 of the myriad cases passing over his desk over a 2 year period received a Notice of Allowance. For an EPO practitioner that’s a startling statistic. With PSA in the EPO, most reps get most apps through to allowance, despite the determined efforts of the EPO’s finest. My hunch: imposing PSA on the Examiners of the USPTO would improve the quality of the claims allowed but also, paradoxically result in a surge of allowances. But then again, maybe not. The aggregate “quality” of what’s filed at the EPO is higher. Look at any patent family print out, for the filings out of just one priority filing, somewhere in the world. One finds an A publn for each country in the family. Except for the USA. Where typically there are of the order of 10 to 20 patent publications. So an EPO examiner has a x10 greater chance of writing a Notice of Allowance. 60 in two years sounds about right.

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  16. I have 16 allowances in 16 months at the PTO. I’d say most of them aren’t too valuable (but I suppose you never know). I’ll probably end up with well over 30 after 2 years.

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  17. “and of course nothing patentable ever comes across your desk…”

    Come now, that’s not true. I have something like ~6 allowances to my name. That’s 2 years in. Over 150 patents examined. One of them probably not a good one. I allow stuff, and I’m hardly perfect.

    I say I probably shouldn’t have allowed that one case because he submitted a DIV with very similar claims and I just couldn’t resist spending a little extra time on it. Lo and behold right as the search was coming to an end, a perfect basis for a 103. Only 30+ hours of searching in all told, including the parent. I could have used that art to 103 the first case as well most likely, but, alas, we will never know. Hopefully it being on record in the child will do enough good that the app won’t be too zealous with the parent.

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  18. Warning effect,

    For myself, I did not read E6K’s comments, so I have no idea if they were wrong or not, and frankly I did not care. I just h@te these “tyranny of PC” ninnies.

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  19. E6K, you must be the most skilled examiner in the entire office. You’re always right, your rejections are never overcome, and you never make mistakes!

    and of course nothing patentable ever comes across your desk…

    thankfully all examiners aren’t as perfect as you, because i still get cases allowed.

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  20. Truth be told, with all the talk about the 1st amendment, I’m surprised everyone passed up the key inquiry: what was so gravely wrong with e6k’s original comment? The exact statement is reproduced here for convenience:

    “While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time.”

    The statement consists of the following statements:
    1. Women are annoying.
    2. He (that is, e6k) applauds those who would prefer not to be around women.
    3. He personally finds attractive women “sufferable” and occasionally nice to have around.

    Statement #2 directly follows from #1 – if you find anything annoying, you obviously would not enjoy its presence, especially not on your Caribbean vacation. Statement #3 is fair on its face – attractive women may indeed be nice to have around. Thus, the only potential challenge is of assertion #1. However, “annoying” is an entirely subjective assessment. Given that e6k is presumably a 20-something male straight out of college, his assessment fails to surprise me. From his statements, his experience comprises women of the “buy me this, buy me that, let’s get married today” variety. Opinions of women built from experiences such as these are not likely to be flattering. If there is blame to be assigned, to whom do we assign it?

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  21. “So how many counts did you score between 3:53 and 5:49 PM? ”

    Sadly none, I was hoping this amendment wasn’t as full of sht as I thought it was on perusal. Sadly, it looks like I was right, as usual. So, I got to start a new case after finaling.

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  22. And you were right, I did miss your earlier post. Sorry.

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  23. RQ,

    In response to your last comment, I don’t give a crap if people want to misinterpret what I was saying. However, for your edification, e6k was using the implication perjoratively, the implication tself is not inherently perjorative. Similarly, Canuck can be an insult if used in a derogatory sense, but there’s a comic starring a Canadian superhero named Captain Canuck as well.

    It’s all in how the words are used. The exact same words in two different contexts can vary greatly from very offensive to not at all.

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  24. “gtg for awhile gang, got some counts to get done today. End of the quarter you know, need to see if I can allow some cases or something :) Probably can’t :(”

    So how many counts did you score between 3:53 and 5:49 PM?

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  25. “You can continue getting your panties in a bunch over ill-considered comments on the internet (just dreadful, I know), or we can drop the righteous indignation and discuss, you know, law.”

    Funny, I actually said that.

    Well, I feel like a dunce. “Do as I say, not as I do …” and all that. Ah, the bitter taste of hypocrisy.

    Anyway, my sincere apologies to all involved; I’m done with this. Time for some deep reflection on self-control.

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  26. “Good times, except no new grounds :(” – E6k

    I just noticed this. It’s good times at the PTO when asinine rules that punish applicants are promulgated, eh? WAHOO.

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  27. RQ,

    I see your point. Your example of the principal is a fine one. However, in that case the principals comments were mislabelled. I agree that shouldn’t be done.

    In this instance though, 6k’s comments were exactly what I said they were. I did not mislabel his comments in an attempt to get others to be offended. They can be offended, or not, all on their own.

    I also understand his comments may have been an attempt to make a joke. I was just letting him know he’s not funny.

    Well, he’s funny when he discusses the law. But in that context, he’s not trying to be funny. Or maybe he is. Who knows.

    “I’d like to be able to trust the panel to have read and remembered that section from the first pass.”

    Clive, I think the answer to your question is: what is the value in re-presenting the arguments? If the APJ’s weren’t buying it the first time around, what makes you think they’re gonna buy it simply by repeating it?

    Draft the brief. Get out your copy of Strunk & White, do some serious editing. Pull every word processing trick you know. If you still need more than 30 pages, file your petition.

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  28. “We’re merely letting those who post offensive comments know that their comments are unappreciated and unwelcome.”

    If it wasn’t unwelcome, unappreciated, and hopefully offensive then why do you think I would have made it in the first place? I dare say I don’t need you to point any of those things out for me.

    Jebuz guys, I make a comment that started out as a jab to pds implying that he couldn’t get any women to go with his boat/beach/booze, implying that even if he had beach/booze then he still wasn’t on top of the world. Then it subsequently morphed into one saying that I might actually admire him if he didn’t have any by choice. This happened because as I was saying the first sentence it dawned on me that perhaps the addition of women to the mix were not necessarily a positive thing because they are often annoying, but even so I figured I would probably enjoy a few around. I’m no more woman hating than your avg. guy annoyed with his women.

    That’s all, that’s it. End of story. We can move forward and you can get on with bashing the appeals rules now.

    The best reason to not insult anyone with lawyers around: being spared having to sit through the discussion about why it was bad or wasn’t bad. Move on already.

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  29. Somebody: Obfuscation. Labelling a comment as “racist” doesn’t explicitly state that everyone ought to be offended either. Let’s just say that the implication is rather strong.

    You missed the point of my question on good manners and conscience – neither of these is objective. What happens when your collective disagrees (worse – what if you’re the *only* person that finds something offensive)? Restraint, as everyone knows, doesn’t have to be physical, legal, or absolute. In this case, I would agree that you alone have minimal restraining effect, but it’s the entire mindset of ‘how dare anyone say anything offensive’ that I was specifically addressing.

    Finally, you’ll have to excuse me for sidestepping your question on the merits of e6k’s comment, because it is far too obvious a trap. Let’s just say that his comments are not in good form for appeal.

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  30. Riveting as it is discussing whether pds is straight and what role political correctness and the First Amendment have on this private blog, I’ll try again:

    Regarding appeal briefs and a page limit, what’s the current thinking on the need to re-present an argument that applies equally to the first and second sets of rejected claims? I’d like to be able to trust the panel to have read and remembered that section from the first pass; but I’ve also seen briefs where appellant re-presented the arguments anew for the second/third sets of claims. The new page limit makes the first approach difficult if not impossible. Does anyone have experience with the second approach?

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  31. “Similarly, by labelling e6k’s comment as ‘misogynistic’, ‘somebody’ was suggesting that everyone ought to be offended by that comment.”

    Never said that. I said that we probably haven’t seen the lowest of 6k.

    I was offended. If you weren’t, that’s your problem, not mine.

    BTW, I “labelled” 6k’s comments misogynistic because they were. As were his previous comments. And his comments in response to my comments.

    “Who is the arbiter of what good manners and conscience are?”

    I am. As are others who read and post here. But we’re not restraining anybody. We’re merely letting those who post offensive comments know that their comments are unappreciated and unwelcome.

    “whenever anything is attributed to race or gender, the speaker/writer is immediately shouted down on the basis of bigotry without any consideration on the merits. This is nonsense, and societally dangerous.”

    What exactly were the “merits” of 6k’s comments? Please, do tell.

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  32. Lionel: I was replying to Leopold in that post. My reply to you came later, which I think you missed in much the same manner as I missed yours.

    Oh, I verified that story, exactly because it was so ridiculous. This was almost a decade ago, so I don’t remember the exact wording of the original comment or the apology, but suffice to say that the parents were in uproar. Nowadays, it may not seem like a particularly questionable issue because of the body of evidence available, but it was apparently far less acceptable at that time – or at least at that place.

    Your last comment is telling. The difference is obviously that ‘racist’ has an inherently negative connotation, whereas ‘gay’ does not.

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  33. RQ,

    It’s this general PC bogeyman of (mainly) Christian, white males I object to. It’s a reaction to a combination of (1) the irrational fears of others, and (2) people lashing out because others make them feel uncomfortable.

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  34. RQ,

    One, the last comment was me, not Leo.

    Two, I have never heard of anyone having to apologize for saying that black or hispanic students underperform white students. If there were a statement that they underperform because they are black or hispanic, that would be something I could see him being chastised for. Otherwise, I agree that there was no reason for the principal to apologize. I would verify that story.

    Three, how would my referring to E6K as racist (even though I actually did not label anyone anything) be any different than his implying another guy was gay?

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  35. Lionel: sorry, didn’t see you there. If you read your post, particularly the last line, you’ll notice that it applies to all parties. Specifically, I’m not “legally restraining” anyone else from saying anything (exactly as it should be), and further, “be as _____ as you like, just don’t get PO’d when people tell you they don’t like it and you should shut the f$%^ up”.

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  36. Now I’m in the white pwace.
    How many times do I have say —

    Hey Guys, Why can’t we all Just get a long? Why can’t we channel our extra energy against Piracy Director Dufas and his main minions, the “Coalition for Patent Piracy” and its miserable members, e.g., (¢¿©isco), and any other Patent Reformers who have been screwin’ with us patent professionals by, e.g., rejections, returns, rejections, returns ad infinitum and would foist many other frustrations and levies on patent attorneys and their inventors alike, and threaten our very livelihoods.

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  37. lolwut?

    … hmm, doesn’t have the same effect when you aren’t a 20-something.

    Leopold: First of all, there’s a distinct difference between one person exercising restraint (which I find more palatable than the ephemeral concepts of “conscience” and “good manners”, but I’ll get to that in a moment), and having others restrain that person. My point is that political correctness is too often wielded as a censoring tool in place of substantive discussion of sensitive issues. Race is obviously Exhibit A here, but gender isn’t far behind. One of my kid cousins, then of high-school age, told me that one of the principals in his school district was forced to apologize for stating that black and hispanic students were underperforming their white and asian counterparts – despite the fact that the hard data showed that this was absolutely the case in all of a number of objective metrics: GPA, number of honors/AP classes taken, SAT/ACT scores, etc. You see the same thing in public discourse – whenever anything is attributed to race or gender, the speaker/writer is immediately shouted down on the basis of bigotry without any consideration on the merits. This is nonsense, and societally dangerous.

    I promised I’d get back to “conscience” and “good manners”. Who is the arbiter of what good manners and conscience are? Whose philosophy do we use? Which culture? Would you be in favor of silencing blasphemers?

    And as for your last comment – labelling something as “racist”, “sexist”, etc. is exactly a requirement that other people be offended along with you. Similarly, by labelling e6k’s comment as “misogynistic”, ‘somebody’ was suggesting that everyone ought to be offended by that comment.

    Godwin: Quirk’s Exception holds that Hit ler must be invoked in an actual argument to have any effect.

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  38. RQ,

    Chilling effect? Really? No one is legally stopping you from saying anything. If they criticize you for your comments, then you can either reflect on what they said or you can choose to ignore it, but be a man for god’s sake.

    And PC is not an ideology. First, as Leo pointed out, if you say something I believe to be offensive, I can call you out for being offensive. Why should my speech be curtailed? That includes my right to say “that’s inappropriate,” or “should not say that”

    Most “PC” behavior comes from mandated from corporations or businesses trying to reach wide audiences without offending them, and the rest usually comes from independent advocacy groups.

    Regardless, be as racist or misogynistic as you like, just don’t get PO’ed when people tell you they don’t like it and you should shut the f$%^ up.

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  39. Can I invoke Hit ler and ki ll this thread? It looks like we’ve deg enerated far far away from the original topic into personal name-call ing.

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  40. “Outside of outright slander/libel, there’s really no excuse for chilling effects in any form, and PC is one of the worst offenders.”

    That’s nonsense. Conscience, as well as good manners, might be “chilling,” but I, for one, would prefer that people have them, and exercise them.

    e6k’s right to act like a child doesn’t extend to immunity from criticism. “Political Correctness” is insisting that others are required to be offended along with you, not simply speaking up for yourself.

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  41. “I wasn’t aware you have never known any normal 20 something guys. Maybe you’ve never been outside or had any friends? I assure you, I’m one of the more tame ones.”

    That doesn’t reassure me.

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  42. “e6k, you had a chance here to act like an adult. You blew it.”

    Lol, you mean kind of like on the first day I was here? If I was here to act responsibly then I would behave accordingly.

    “i wasn’t aware the PTO was hiring 13 year olds.”

    I wasn’t aware you have never known any normal 20 something guys. Maybe you’ve never been outside or had any friends? I assure you, I’m one of the more tame ones.

    You know weary I would bother with you, but since the only thing that is weary about your role as lexicographer is how it makes those around you feel I chose not to.

    RQ, you don’t seem to get it do you? I appreciate the support, but you aren’t very familiar with what a troll post is are you? You’re trolling with that post you just made.

    gtg for awhile gang, got some counts to get done today. End of the quarter you know, need to see if I can allow some cases or something :) Probably can’t :(

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  43. ‘somebody': Oh, you’re just too witty for me. I’m afraid I’ll have to concede. Please, judge away.

    e6k is a troll. You know, I know it, and he’s even admitted it. Knowing this, why would you pay his off-topic nonsense (and allegely “totally uncalled for” comments) any attention – going so far as to specifically point out the most offending parts? If that’s not playing right into his hands, I’m not sure what is.

    As for the “totally uncalled for comments” themselves, I take the well-known position: whether I agree or disagree with what someone says, I absolutely defend their right to say it. Which, incidentally, is why I took particular issue with your indignation – how *dare* anyone say anything offensive! I’m tired of that nonsense. Outside of outright slander/libel, there’s really no excuse for chilling effects in any form, and PC is one of the worst offenders.

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  44. “It was a slightly misogynistic remark that followed, not unlike ones made routinely by guys my age.”

    i wasn’t aware the PTO was hiring 13 year olds.

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  45. “…they’ll be the one wanting a prenump.”

    A prenump? Sounds fun. Where do I get one of those?

    e6k, you had a chance here to act like an adult. You blew it.

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  46. “Congratulations 6K, going after someone’s possible sexual orientation … a new low, even for you. Unfortunately, I still think you have a lot more “lows” in you.”

    What a remarkable lack of comprehension. It might only be matched by my alleged misunderstanding of statutes etc. If by going after your “sexual orientation” you mean that I’m saying you’re so old that you’re through fiddling around with women … then yes, I completely am. It was a slightly misogynistic remark that followed, not unlike ones made routinely by guys my age. This is not calling you gey, though as we can see you’re not bright enough to get it. If you prefer I can just call you gey so that you can grasp what I’ve said.

    As to my opinion on the asian ladies, as Sienfeld remarked, paraphrased, “Is it really racist if you’re racist for the race in question?” Indeed I’m so racist against asian girls that I’ve dated two … right. But yes, technically I am racist towards asian women, in that I often prefer them. The demeanor which I refered to in previous threads happens to be just the way I like it thanks. Come to think of it, the french girls I’ve met are chill too. Even so, “buy me this” “buy me that” “I want to have babies” “let’s get married” “if we’re not getting married we should see other people too” etc manipulative bs is annoying at best, and more wearisome than PDS’s prosecutions tactics at worse. I need to date some lawyer chics, making good money on their own, so they don’t need mine, they might want a career more than a lot of children, and they’ll be the one wanting a prenump. I know a few, but like the girl doctors I know, they’re not that attractive.

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  47. you’re directing me to discuss, you know, law?

    but you have no issue with 6k’s totally uncalled for comments?

    you’re right, i am in a position to judge others. including you.

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  48. Right, because you’re in a position to judge others.

    See? I can do meaningless one-liners too. You can continue getting your panties in a bunch over ill-considered comments on the internet (just dreadful, I know), or we can drop the righteous indignation and discuss, you know, law.

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  49. God forbid that anyone be **offended**. Heavens, that would be just **terrible**!

    If you’re going to point out the allegedly misogynistic comment made by e6k, perhaps you’d also like to address the fact that pds’s comment about “going after someone’s possible sexual orientation” implies an inferiority of one sexual orientation to another. Ruh Roh.

    Alternatively, we could drop the whole PC routine.

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  50. Mad,

    He’s not entitled to the benefit of the doubt on this one. These are not the first comments of this type that he’s made. I seem to remember his rather offensive ruminations on the supposed attributes of Asian women (which were in response to a rant about the JPO by everybody’s favorite doomsday manic depressive Gideon Pope). Those weren’t funny. Nor are his recent comments.

    Reply
  51. I think that E6k tried to make a joke that did not go over well. I think it is easy to misinterpret because some of the readers do not agree with his point of view. Nonetheless, I will give his comment the “broadest reasonable interpretation” and interpret his remarks as not intentionally offensive.

    Reply
  52. pds,

    You missed this little misogynistic tidbit from 6k:

    “While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time.”

    I’m sure we haven’t seen the bottom yet.

    Reply
  53. “I notice a lot of talk about caribbean and drinking and a conspicuous lack of womenz.”

    Congratulations 6K, going after someone’s possible sexual orientation … a new low, even for you. Unfortunately, I still think you have a lot more “lows” in you.

    Reply
  54. “They could at least endeavor to get the basic jist of the invention across clearly.”

    The word you’re looking for is “gist.” Further, modifying “gist” with “basic” is almost certainly unnecessary. The “basic essence” of something is likely the same as its essence.

    Reply
  55. “Drafting a quality application together with claims that will be construed properly in litigation is a very detailed process and a skill that takes years to develop.”

    I agree, it’s hard to get everything perfect. That’s why when attorneys ask me how to amend the claims I tell them that I’ll give them the jist of what it needs to say then they can get back to me with the wording they like. But that doesn’t mean there’s any excuse for writing it worse than a 6th grader would. So perhaps I should change that to, “getting the basics of an application in is not rocket science”. They could at least endeavor to get the basic jist of the invention across clearly. Screwing up is one thing, consistently royally screwing up is another. PDS was telling us about this phenomena when it occurs in examiners actions.

    Reply
  56. E6k,

    Drafting a quality application together with claims that will be construed properly in litigation is a very detailed process and a skill that takes years to develop. It is not as easy as you may think. (I also doubt that you understand what makes a quality application or not, given your zero exposure to litigation)

    However, I do agree with you that many foreign drafted applications, particularly french, are god awful.

    Reply
  57. “If instead of stealing Applicants’ Patent Office fees (which Congress did for many years a number of years ago) those (stolen) fees had been invested in recruiting, training and retaining new examiners, especially in the new technologies, and updating the examiners’ search tools, we would not be in the bind we are today.”

    The thing that some people don’t seem to ever understand is that the gov. offers its services at whatever cost it deems appropriate. Mayhap the congress feels like the quid pro quo is out of wack and all patent apps shall now pay the US an extra 1000 dollars for the right to exclude, up front. It is entirely up to them what happens. It is at their discretion that the “at cost” fees stay in place and there is much talk of the PTO attempting a power grab for the control of fees. I’m personally rather let down in Ms. Peterlin for not getting that done.

    “6K … by the time the system changes, you’ll be still on this board spouting about how you knew change was coming 20 years ago, and I’ll be on my yacht in the Caribbean sipping on something sweet and alcoholic.”

    I notice a lot of talk about caribbean and drinking and a conspicuous lack of womenz. While I have to applaud you if you prefer them not around at all, as annoying as they are, I have to say that I personally find a few attractive ones sufferable and even enjoy having them around from time to time.

    I’m just mixing it up a bit with my ID’s. I do e^6k sometimes. Whatever. And let’s be honest, I’m a bitter know it all who irl is willing to accept the way things are and abide by the rules handed down from above. Railing for change online and even irl is different than insisting upon it irl. You simply must know the difference between trolling on the net and trolling irl ( link to google.com ). Trolling too much irl is bad, and can even get you killed in some instances. Don’t get me wrong, I’m not trying to say that my comments here are all bs I’m making up just for a laugh, but let’s be honest, almost all of what we post on here is just trolling in the purest, most broad, sense of the term.

    L’examiner seems to be a frenchie, funny enough the french have a horrible rep in my AU for something similar to what he seems to be talking about. Allegedly it seems we have to rewrite your whole application for you before we even examine it because it’s all a big jumble of crp that we can’t even hardly sort out. You guys must have some wacko guys drafting for you because writing up a patent, even in my art, isn’t rocket science.

    Reply
  58. “L’examiner — good for you for examining the dependents and indicating which are allowable when the independents are not allowable. That was the way examiners did it many years ago but I have not experienced it recently (in the past five years or so). And it made/makes for quicker prosecution.”

    I agree 100% and three cheers for L’examiner.

    Reply
  59. L’examiner — good for you for examining the dependents and indicating which are allowable when the independents are not allowable. That was the way examiners did it many years ago but I have not experienced it recently (in the past five years or so). And it made/makes for quicker prosecution.

    Reply
  60. “As for me, I’m going to present claims that are as going to be as broad as I believe have a chance at being patentable.” – pds

    I have no problem with that. The applications that cause problems are the ones where every single limitation is extrapolated to infinity resulting in some big sprawling mess with art all over the place. Typically the art covers some aspects that fall within a perfectly reasonable interpretation of the broad claim but far afield from the actual invention. Because of poor description and lack of coherent deps, amending usually runs into written description problems, and prosecution is a painful, drawn out process.

    That’s is what I call overclaiming, not merely broadening beyond the bounds of the preferred embodiments. “Overclaim” all you want, but write some good deps, so I can point to allowable subject matter and wrap it up quickly.

    Reply
  61. 6K … by the time the system changes, you’ll be still on this board spouting about how you knew change was coming 20 years ago, and I’ll be on my yacht in the Caribbean sipping on something sweet and alcoholic.

    What you lack is perspective … common among newbies. Step foot outside your office (likely without a window) into the real world, understand real-world issues, and gain a little experience to put everything into perspective and you should be a changed man. It is easy to be an asshole in your 20s. Lots of people are … its comes with the age.

    Unfortunately for you, however, it seems that bitter know-it-alls in their 20s typically end up being bitter know-it-alls in their 40s and 50s because nobody likes to be around a bitter know-it-all, so although they progress quickly through the ranks, they quickly meet a ceiling because nobody with any pull wants to deal with them.

    Karma will take care of you ….

    BTW: What is with the 3rd ID now? Are you getting banned so you have to use a new ID?

    Reply
  62. If instead of stealing Applicants’ Patent Office fees (which Congress did for many years a number of years ago) those (stolen) fees had been invested in recruiting, training and retaining new examiners, especially in the new technologies, and updating the examiners’ search tools, we would not be in the bind we are today.

    Reply
  63. c[_] <- Empty Cup of QQ Tears

    c[▄] <- Typical overclaimers supply

    c[▓] <- PDS’s daily amount generated

    The system is changing within my lifetime PDS. As will most things. This country will be as unrecognizable in 50 years as it was in the 90’s to those in the 40’s. As for the system though, you barely escaped it changing in the last year. They got a bit overly greedy.

    Reply
  64. “You my be surprised at how much faster you prosecution as a whole goes if you change the way you practice PDS. Starting off on the wrong foot by overclaiming at the get go is probably shooting you in the foot more than you guess based on your alleged prosecution histories.”

    Sorry … save your breath for MM. He’s the one who appears willing to not zealously represent his client before the USPTO within the bounds of the law. If, based upon the facts before me, I believe the client can legitimately present claims as to certain subject matter, I will present those claims. If, in hindsight, with the benefit of the examiner’s search (which is paid for by applicant) those claims appear to be overbroad, I will NEVER lose any sleep over it.

    6K … your problem is that you just don’t understand the role of the examiner in the PROCESS. The PROCESS doesn’t begin and end with the applicant with the examiner serving as the referee. Instead, the examiner is part of the PROCESS. Once this concept finally works its way through your dense head, you’ll understand that the examiner is supposed to work hand-in-hand with applicants as to defining the correct line between what is patentable and what is not.

    I’ll give you credit for having a desire to learn more than the average examiner. Unfortunately for you, you showed up during a time in which the USPTO (led from the top) has shown great distaste for inventors and inventions. The anti-inventor propaganda that you’ve been fed since the day you started has blinded you to the way the system should work.

    Reply
  65. “Lesson to 6K …. dependent claims do have value.”

    Why you take so much pride in reiterating to me things that I understand I will never know. Of course they have value, they are the illigitimate backbone on which your overclaiming philosophy is founded.

    Btw, I’ve had a few reps already that went for the picture claim up front and wanted to claim the overclaim later. I felt strangly compelled to allow the case, even going so far as to put forth an argument for the uncombinability of two references which I could have glossed over. I even felt compelled to cite art that nearly locked them into the picture claim anyway, without bringing in limitations from the rest of the device at least. They’ve got more subject matter to get to though and I’m sure DIV’s will be coming my way soon enough.

    You my be surprised at how much faster you prosecution as a whole goes if you change the way you practice PDS. Starting off on the wrong foot by overclaiming at the get go is probably shooting you in the foot more than you guess based on your alleged prosecution histories.

    Reply
  66. MM

    I have no problem with you counseling clients to claim less than what they might be entitled to.

    As for me, I’m going to present claims that are as going to be as broad as I believe have a chance at being patentable. I will also be presenting dependent claims (i.e., similar to your “picture claim”), which allows me to kill two birds with one stone.

    Lesson to 6K …. dependent claims do have value.

    Anyway, keep counseling your clients the way you are. Far be it for me to come between a potential couple million dollar malpractice judgement and one of my all-time favorite trolls.

    BTW: if your firm employs a good malpractice carrier, they should be giving you tips on the types of mistakes to avoid and what have gotten attorneys in trouble before. Apparently, you must be missing those meetings/handouts.

    It is comments like yours that bring a smile to my face.

    Reply
  67. With all requisite apologies for the threadjack:

    Regarding appeal briefs and a page limit, what’s the current thinking on the need to re-present an argument that applies equally to the first and second sets of rejected claims? Can I trust the panel to have read and remembered that section from the first pass? Or should I repeat it anew for the second/third sets of claims? I’ve seen both.

    I pulled my most recent appeal brief. 41 claims in three sets appealed, 4 grounds (all 103(a)), 4 references in all manner of different combinations. Grounds and Arguments sections reformatted to 14-point, double-space … 40 pages. (And I *was* trying to be terse, but I had to reassert an argument the Examiner had stepped over without addressing as well as try to argue why a 132 Declaration was directing rebutting and why it should have been considered (and wasn’t).)

    Reply
  68. “In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J’s attorneys found that the patent was narrowly drafted and refused to take a license. In 2005, the Immunocept sued its patent attorneys for malpractice.”

    link to liebertonline.com

    Tough luck for Immunocept. But let’s also recognize that there is a difference between underclaiming to capture specifically the valuable aspects of an invention versus shooting oneself in the head by using the term “consisting of” instead of “comprising” (particularly when the term “consisting” does not even appear in the specification … weird).

    Sadly the prosecution history is not available.

    If that’s the only case you can point to, I stand by my proposition that malpractice fears do not justify claims that are puffed out like one of George Constanza’s jackets. As SF points out, there are very easy ways of proscribing the worst sorts of client behavior. I hasten to add that not all “obvious” claims are merely “arguably obvious.” Some are just obvious, like a giant zit on one’s nose.

    Reply
  69. I like the MM-noted approach: file narrower, picture claims for the commercially released products to quickly cover them. You can always file broader claims (in the US) later if you haven’t written an unduly narrow specification.

    I would add that, if your client wants to “overclaim” to cover arguably obvious claims, try them in a continuation if that’s your client’s wish. But just explain the likelihood of the obviousness rejection and the post-rejection need for evidence of secondary considerations, amendments, etc. If your client wants to “overclaim” anticipated claims, give them the anticipating art and ask them what’s the difference.

    Reply
  70. To clarify, “[f]rom this blog” means the one you are presently reading. Also, it is common knowledge that claims of malpractice for supposed errors during prosecution are increasing. Thus, even if no example could be given (which is was), it would have been an eventuality.

    Reply
  71. “Can you tell us, pds, where a prosecutor has ever been sued for malpractice for obtaining patent claims that were too narrow?”

    Malcolm:

    From this blog:

    “In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J’s attorneys found that the patent was narrowly drafted and refused to take a license. In 2005, the Immunocept sued its patent attorneys for malpractice.”

    Reply
  72. pds: “In my recent experience, of the last 200 or so office action I have received (probably less than a year’s worth), I would guess that 80-90% include at least one over-rejections.”

    And you appeal all of them to the Federal Circuit, right? Because getting every last drop of claim scope if the most important thing ever for your impossible-to-please litigious clients, right?

    “Attorneys “overclaim” because (i) they are working with imperfect information and (ii) it is likely malpractice to underclaim.”

    It is likely malpractice to underclaim? Huh. So if I decide to pursue a picture claim in an application to quickly obtain protection for the specific composition that my client undoubtedly invented, that’s malpractice?

    Can you tell us, pds, where a prosecutor has ever been sued for malpractice for obtaining patent claims that were too narrow? I’d like to hear more about these cases. Surely there must be some notable cases to justify your paranoia. You realize, of course, that filing claims that are unpatentable and too broad is also a waste of money. Isn’t that malpractice? Filing claims that are so broad they plainly and unambgiuously cover, e.g., radar or some other ancient technology, is a violation of Rule 56. Isn’t violating Rule 56 malpractice?

    I’ll just repeat what I’ve said before: anybody who believes that applications containing absurdly broad facially invalid claims are “rare” is lying, deluded, ignorant or all three. As e6k said, just pull out ten newly published parent applications at random and you’ve entered the World of Bullcrxp. I don’t understand what is to be gained by denying this.

    Reply
  73. beentheredonethat: Your links to blogs written by those too-cool-for-school people I would never hire (assuming they graduate) basically prove my point.

    Have fun playing bingo at the back of the class while the rest of us learn (which involves speaking up).

    link to law.com

    Reply
  74. “I’d rather overclaim a bit then have to narrow the claims during prosecution than explain to my client why I DIDN’T try to claim something more broadly and now their patent doesn’t capture the infringer.”

    If that’s an honest explanation, you should get some training in client management. Sheesh.

    Reply
  75. “At most, at very most, if at all, the “overclaim” should result in one additional office action.”

    So now one additional office action as the norm is ok? From what I hear that is the usual way things go, if the app doesn’t mind bringing up a dep.

    “It is painfully obvious to all those with eyes to see, the growing backlog is due to the Patent Office’s tendency to pick an issue to make hay of (112, 101, etc.), and then issue ridiculous office actions where every claim is rejected on this basis.”

    Well, in that case then why doesn’t congress simply amend the statute such that any examiner that issues a wrong rejection is fired? Is congress against you too? Are the american people against you by association? Or, perhaps is it not so painfully obvious? And in fact might it not also be not even apparent and you’re just paranoid? Might it also be that the powers that be are making decisions based on things that are painfully obvious? Finally, might it be painfully obvious that overclaiming is the problem?

    Reply
  76. “most 101 rejections issued over the last 10 years would never have been issued.”

    So … you agree with me that it is possible for an overclaim to include issues under 101, except you’d like to add that this doesn’t happen very often. Thanks, but make yourself clear ok?

    “Back to the “over-rejection,” as defined herein, the “over-rejection” is a rejection by an examiner that will be subsequently withdrawn without amendment. If a dependent claim is placed into an independent claim, and the examiner subsequently allows the independent claim, then an “over-rejection” occurred as to the dependent claim. In my recent experience, of the last 200 or so office action I have received (probably less than a year’s worth), I would guess that 80-90% include at least one over-rejections.”

    I agree, probably at least one over-rejection. Then again, they’re hard to spot many times when you’re looking at the reference from the point of view of the POSHITA rather than someone who has know knowledge of the prior art what so ever (apparently the people that fall into this catagory are 1. apps and 2. their reps). So, overall, you’re probably looking at 30-40% overrejection rate. This is keeping in mind even in those 30-40% that the rejection probably merely needed 103 supplementing. Oh, and let’s not forget, perhaps the attorney brings up a good argument that went unseen by the examiner. It’s not up to us to argue against what position we believe we see the art supports. Not that it doesn’t happen, we usually leave that up to you.

    “Attorneys “overclaim” because: bulsht that is destroying the system”

    I agree. Reforms that are needed are reforming malpractice standards and AQS’s. There, all done, we solved the backlog.

    And hey, pds, I agree that you’ll be working without a complete picture of the art even with a Good AQS. But, it’s a lot better than 0 which is what I see most applicants prefering.

    “However, I do mind an examiner sticking with a loser argument after I’ve pointed out exactly how bad of an argument it is.”

    Usually this comes in two forms, 1. Sticking with a weak position 2. Sticking with a position the examiner still believes is solid because the attorney wrote down his arguments in lawyerese. As to 1 we’re obliged to do this usually. As to 2 I see this all the time, the attorney will send in some “argument” that I can sum up in one sentence and spreads it out for two pages until it no longer even resembles an argument and is instead just accusations of what the art teaches and what the claim says. Usually providing no “interpretation” of what they’re trying to say the claim says. When this happens, I’ve been able to sort things out but I could see how someone who wasn’t inclined to read your piece over and over until it makes some iota of sense might not get what you were arguing.

    Overall, it boils down to you can accept us making a mistake, but what you can’t accept is your failure to persuade us. I agree, that’s unacceptable. For such an educated mind to fail to persuade someone who is making an effort to understand the other sides position is quite … unacceptable.

    I will give you though pds, in the “instance 3″ where you’ve had an interview and genuinely tried to break it down piece by piece and they’re still not getting it then it is a bad thing. However, if their spe is on their side then the reasonableness of your position has to be somewhat called into suspicion. At that point its not just a matter of someone defending a bad position to perhaps cover up shoving the app out the door, it’s them defending a position suggested by the art, even if it is weak. As already stated, we’re then a fair bit obliged to take that position.

    To bottom line it for us though pds I don’t think you will disagree that this sums it up.

    Your position:

    App/rep ignorance is ok, and should be ok.
    Office mistakes are ok, and should be ok.
    the Office sticking to mistakes is never ok.

    My position:

    App/rep ignorance is ok, and should not be ok, thus a change in the statute is in order. From the results of the analysis of the stalled legislation it is clear that the congress was persuaded of this as well as the president.
    Office mistakes are ok, and should be ok.
    the Office sticking to mistakes is not ok except when the applicant has failed to persuade the office, in which case it is always ok. Thus, it falls to the app/rep to persuade the office.

    Reply
  77. All this talk about overclaim is a red herring. I doubt that many prosecute different than I – arguably overbroad independent claims, narrower dependent (and other independent) claims.

    At most, at very most, if at all, the “overclaim” should result in one additional office action. Then the attorney sees (used to, anyway) the art cited, which claims are indicated as allowable, etc., and determines what the response should be.

    It is painfully obvious to all those with eyes to see, the growing backlog is due to the Patent Office’s tendency to pick an issue to make hay of (112, 101, etc.), and then issue ridiculous office actions where every claim is rejected on this basis. Then, the Office changes their interpretation of the issue two or three times during prosecution, further enhancing the backlog. Tie that to ridiculous assertions of obviousness (“it doesn’t matter if the prior art teaches away, or if the principle of operation is changed, or the device is no longer usefull for its intended purpose, I can pick and choose these features from the prior art, so therefore it is obvious”) – that is the backlog. It lies entirely, 100%, with the Patent Office.

    Reply
  78. “In this case, the basic facts is that applicants routinely claim more than they know they are entitled to. Why? Clients and inventors like it that way because (1) they have a better chance of suckering in a naive licensee and (2) every once in a while you hit the jackpot because e6k needs to leave early to cook spaghetti for his girlfriend.”

    True to form, MM would rather be sarcastic than to write something serious. Attorneys “overclaim” because (i) they are working with imperfect information and (ii) it is likely malpractice to underclaim. Most attorneys have some feel for the prior art. However, as I’ve noted before, it is impossible for an attorney to know all of the prior art (for example, how can someone know about the application that was filed thirteen months (or 13 days) before the filing of their application and will become prior art once published?). As such, a good attorney will claim up to what he/she think the client could be entitled to. To do anything else invites a lawsuit against the attorney after the client’s application issued with narrow claims and the client is unable to go after copyists because the attorney didn’t try for broader claims.

    The difference between the overclaim and the under rejection is that the attorney is working with imperfect knowledge, and as a result, cannot write a perfect claim. The overclaim occurs when the examiner applies prior art that the attorney/inventor was not aware of or the examiner construes claim language in a manner not anticipated by the attorney.
    On the other hand, the examiner who over-rejects has everything he/she needs before him/her and still screws up the rejection.
    There are legitimate excuses for overclaiming. There are, however, few excuses for “over-rejecting” beyond inexperience and/or laziness and/or incompetence.

    I don’t mind an examiner overlooking a claim feature because claims can be very complicated and tricky. However, I do mind an examiner sticking with a loser argument after I’ve pointed out exactly how bad of an argument it is.

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  79. Since 6K appears to be in love with the term “overclaim,” let me inject another phrase into the vernacular … the “over-rejection.”

    An aside first …. immediately above, 6K stated that an overclaim can also involve 101 issues. Yet again, 6K evidences his extreme ignorance of the USPTO’s treatment of 101 issues. Since Beauregard, State Street Bank and ATT, there has been little change in 101 jurisprudence as to the majority of the types of claims being rejected under 101. Only recently have signal claims and “mental step-implemented” method claims have been addressed. However, the USPTO has been all over the place in their pronouncements as to what they believe is ok under 101. If the USPTO reacted more to the Federal Circuit than the court of public opinion, most 101 rejections issued over the last 10 years would never have been issued. However, the USPTO keeps monkeying with how to apply 101, despite the clear guidance of the Federal Circuit in Beauregard, State Street Bank and AT&T.

    Back to the “over-rejection,” as defined herein, the “over-rejection” is a rejection by an examiner that will be subsequently withdrawn without amendment. If a dependent claim is placed into an independent claim, and the examiner subsequently allows the independent claim, then an “over-rejection” occurred as to the dependent claim. In my recent experience, of the last 200 or so office action I have received (probably less than a year’s worth), I would guess that 80-90% include at least one over-rejections.

    If 6K would dare to look into the mirror (I’m guessing he is afraid of mirrors for some reason), he would realize that the USPTO is equally if not more culpable in the backlog with their policies that foster the “over-rejection” in the belief that the default and preferred procedure is to reject a claim, no matter the merits.

    Reply
  80. “Funny thing is that every law school class has someone like you. He spouts about how the law should be, how he understands it better than all the dumb people, and how the cases should be read differently (yes, it’s almost always a “he”). Pontification and arrgance are the touchstones. Some time second semester (or for the truly obstinate, second year), he gets a lot quieter. Everyone knows it’s b/c his grades let him know he wasn’t half as smart as he thought he was. I suggest you look up phrases such as “gunner bingo” if you don’t believe me.”

    Uh, maybe you should google “gunner bingo”, hot-shot, because that one kind of backfired on you.

    Reply
  81. Malcolm Mooney as ever sums it up in a few words. But at the EPO his explanations for over-claiming don’t fly. So now we know: there’s good logical commercial business reason routinely to over-claim at the USPTO, but no reason so to do, at the EPO. Have a nice day at the office, 6K. Have a nice day, EPO readers.

    Reply
  82. Question: “How can you say that overclaims ARE the backlog? Have you reviewed all 500k+ applications in the backlog to know this?”

    Answer: What, precisely, do you think that has been happening over the last few years? Show me a randomly selected pre pub. Select it at random. Hck, select it at random from some drafter you think highly of. I will show you an overclaim.

    —————

    No doubt.

    This has been another edition of easy answers to silly questions.

    It’s always a mystery to me why people who may actually have a point to make pretend to be totally ignorant of basic facts. In this case, the basic facts is that applicants routinely claim more than they know they are entitled to. Why? Clients and inventors like it that way because (1) they have a better chance of suckering in a naive licensee and (2) every once in a while you hit the jackpot because e6k needs to leave early to cook spaghetti for his girlfriend.

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  83. “Mr. e6k:
    What do you mean by an “overclaim”? Do you mean a claim which is unpatentable based on prior art?”

    Prior art, being not properly “tied” or some other thing to satisfy 101, or things that are not enabled by the spec as originally filed, all of these. And likely more. To put it bluntly, ineptitude/ignorance on the part of the drafter. I personally see more ignorance than ineptitude, but I hear other AU’s see more ineptitude. Ignorance I will add, that would cost them about 3 minutes to cure 50% of in many instances.

    “How can you say that overclaims ARE the backlog? Have you reviewed all 500k+ applications in the backlog to know this?”

    What, precisely, do you think that has been happening over the last few years? Show me a randomly selected pre pub. Select it at random. Hck, select it at random from some drafter you think highly of. I will show you an overclaim. I will probably be able to show this without EAST and having only google. To up the ante, I will do it in less than an hour. Why do I feel confident making this claim? Because of one simple thing. The odds. The odds are so stacked in my favor that I’m barely even sticking my neck out. Show me four randomly selected apps. The odds go overwhelmingly in my favor that I can show an overclaim in 3/4 in less than 4 hours. Why is this? It is because this is BY DESIGN, it is not a mistake on the drafters part. Lawyer after lawyer gets on here and admits to it. I see it in my everyday experience. It is a philosophy: Overclaim and amend around whatever the examiner can find, let the volume of art/incompetence/unluckiness of the examiner on that day work for us. The people with stamps know the game, they are not stupd. At least on the whole.

    If this were horse racing the odds I would win this contest would be ~1 to 100.

    Based on the above, I can say with some certainty that if the overclaiming patents were not filed AT ALL, then the backlog would probably be gone within five years. If they were toned down to not being overclaiming it would probably result in around 10 years. What does that tell you? Overclaims contained in patents are the backlog. At our current capacity we could handle all the work put before us no problem without such claim practices that are popular today.

    “Using the pto as a private search firm? ISN’T A SEARCH PART OF WHAT APPLICANTS PAY FOR?”

    You’re not getting it sparky. Take a seat and present your hand. Intentionally overclaiming with the intention of amending around whatever art is shown to you is using the PTO as nothing but a search firm for the first go around, it is not a good faith attempt to claim something you actually believe to be an invention. It’s a bad faith attempt to claim something you think MIGHT be an invention. This practice needs to end. You are paying for the search to cover the costs of the search, which must be done, you’re not “paying us to search”. In other words, we do not have a choice to search or not, it is not your payment which is inducing us to search, it is the statute.

    No, I do not give two shts about if it has been done that way for 200 years. I think that the comment from the old timer shows why that was acceptable back then and is becoming less so now. Dam wizz kid lawyers.

    Here’s something interesting. My sister had an idea for an invention she told me on the phone. I don’t mind tell you what it is, since in literally 10 seconds I had 102b art on what she intented to claim.

    link to google.com

    Now, lets say she was some hot shot industry person and they went to a law firm, would your firm have done a 10 second google to help that woman out? Or would you just say, “well, I never seen it, it must be inventionlol”.

    “Shouldn’t the fact that an examiner cannot make a proper rejection after 3 RCE’s and an appeal show that, hey, maybe the claim IS patentable and NOT an overclaim?”

    I will give you that is often indicative and I’m sure that, even though you may not have about it, they are considering that in that case. A lot goes on you never hear about you know. In either case, if the SPE is still reticent to allow, it is likely because he feels he could 102 it in a few hours himself if he put his mind to it and that the junior examiner just scks. He’s probably right. Junior examiners sck sometimes, that’s life.

    Reply
  84. With regard to the waiver provisions:

    I don’t see how the BPAI can ignore the prosecution record.

    The waiver provisions with regard to arguments already of record are, well, I’m not even quite sure what word to use.

    Its one thing to waive an argument you COULD have made but didn’t. Its another thing entirely to work a waiver by inaction of an argument that is already of record. Its as if to say the record is meaningless on appeal and that the BPAI is not bound by the record.

    That just can’t be right.

    Reply
  85. FR 73, 112, 32929 col. 3 top of page,

    “…failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered.”

    It says nothing about the petition having to be acted on before an appeal can take place.

    Other significant waiver provisions that I do not understand are the waiver of arguments that are already of record. How can the PTO impose a page limit yet require that you essentially restate every argument you’ve ever made???

    Dudas (or whoever is holding the puppet strings) at their finest. There are a few other areas that show the contradictory spirit of the rules that have been emanating from the Dudas PTO.

    Oh, and I love the part about the sanctions. Just what is “dilatory” anyway? It sounds like a feminine care product.

    Reply
  86. E6k,

    How can you say that overclaims ARE the backlog? Have you reviewed all 500k+ applications in the backlog to know this?

    Using the pto as a private search firm? ISN’T A SEARCH PART OF WHAT APPLICANTS PAY FOR?

    SPE’s refusing to allow is knowing it is an overclaim… when their examiners cannot make a proper rejection? When they can’t find a 102 and where their 103 rejections are disparate references that are not properly combinable? Shouldn’t the fact that an examiner cannot make a proper rejection after 3 RCE’s and an appeal show that, hey, maybe the claim IS patentable and NOT an overclaim?

    If you want to compare the PTO to a nudie bar, the PTO would be a nudie bar that punishes customers for coming in every day, that comes up with ways to make the people standing in line outside go away.

    I still can’t believe that you don’t realize that the current practices of the PTO are f’ing up the system, much moreso than overclaiming attorneys are.

    Reply
  87. Mr. e6k:

    What do you mean by an “overclaim”? Do you mean a claim which is unpatentable based on prior art?

    Reply
  88. “6k,
    While I don’t agree with the practice of intentionally overclaiming, I know why attorneys do it and I don’t know why you care so much. It should make your job a lot easier.”

    Did you see the guy who posted, upthread I believe, about how examiners used to get a sht ton of allowances and it made making production much easier? Guess what, the no. of allowances went down, but the production req’s didn’t go up. Allowances=”easy money” shall we say. Further, I take issue with it because it is the backlog. Not merely “it causes” the backlog. Overclaims ARE the backlog.

    Let’s be clear, the PTO does not want to “punish” anyone for “seeking its services”. The PTO does not appreciate people using them as a private search firm and a government agency all rolled into one. We are the gov. agency portion only, if you’re not smart enough to be find out, at least nearly, what your invention is, then hire someone to do it for you from the private sector, we don’t have time for your bsing around we have too many people in line. We are not a for profit, or even nonprofit, organization that wants “customers”.

    As a personal note, rejecting overclaims until they resemble what they invented is uncalled for, and causes my person much distress when trying to determine, well, would this combination be obvious? Sure, I can TSM all day long, but as you well know some combinations just aren’t reasonable. Where do I draw the line? Did I just sign something into being that shouldn’t be and might cause someone no end of trouble down the line?

    “he true cancer eating at the system is …”

    All of those are in RESPONSE to your overclaiming. Cut the cancer out and the symptoms go away. How do you even reconcile saying that dudas or spes or examiners reluctance to allow is not in direct response to them knowing that the claim is an overclaim? It’s on its face blatantly present that it is. What other purpose besides stopping bad patents do you believe is served by the reluctance to allow? Nothing? YOU”RE RIGHT! Like all attorneys you require a lot of hand holding to get through the basics. Have you ever met Dudas? Why do you think he’s such a bad guy? He’s just a guy doing the best he can to operate the PTO in a manner conducive to best practices. I.e. allowing good patents and not allowing bad ones.

    “Did i mention that applicants PAY for their applications to be examined?”

    You seem to think that just because you’re paying for something that it entitles you to behave however you want. Go to a nudi bar sometime, I can assure you it doesn’t there. And it sure as hck doesn’t in the much more reputable grounds of the pto.

    “6k, you better stay at the pto for your entire career, because you’d go absolutely nowhere in law school and you’d get fired from any other job where you held your customers in such contempt.”

    Once again, I love the apps themselves, but I would look with disdain upon attorneys around me who lead those apps into overclaiming simply to do that. The whole reason for switching is to demonstrate how you don’t have to be an arse and f the system up to prosecute a patent.

    Reply
  89. 6k,

    While I don’t agree with the practice of intentionally overclaiming, I know why attorneys do it and I don’t know why you care so much. It should make your job a lot easier.

    I’d rather overclaim a bit then have to narrow the claims during prosecution than explain to my client why I DIDN’T try to claim something more broadly and now their patent doesn’t capture the infringer.

    I also don’t understand how overclaiming is a cancer eating at the system. An applicant overclaims? Reject them until they narrow the claims down to something patentable. How is this a cancer? It’s a time waster, but aren’t the applicant’s PAYING for this examination? The USPTO has got to be the only entity in the world that wants to punish those who seek to pay to use its services.

    The true cancer eating at the system is SPE’s who refuse to allow cases where even the examiner can’t come up with a proper rejection. The true cancer is Dudas and those who pass rules that punish the applicant and make it more and more difficult to get the patents that applicants are entitled to. (please note that i said “the patents that applicant’s are ENTITLED to.” this doesn’t mean every patent should be granted, this means that when the examiners can’t formulate a PROPER rejection using 102, 103, and 112, the patent should be allowed) The true cancer is examiners and pto employees like yourself who hold applicants and attorneys in such contempt. The true cancer are those who want to outlaw software and business method patents because, hey, a 101 rejection is a lot easier to make than a 102/103 so it’ll help clear out the backlog.

    Did i mention that applicants PAY for their applications to be examined? why do you care how many are filed or how crappy some might be? if they’re crappy, reject them.

    6k, you better stay at the pto for your entire career, because you’d go absolutely nowhere in law school and you’d get fired from any other job where you held your customers in such contempt.

    Reply
  90. Of all the above discussions, refile the pat app seems to be the answer. 45 yr ago, Examiners were expected to maintain about a dozen appeals in his docket. Win/loose 50/50. This simple expedient provided the Examiner with the knowledge that His practice of Patent Law coincided with the entire patent office corps. Thus the Bd Appeals essentially established the Examiners concept of patentability. Patent Law Practice was fun until the wizz kids took over. Not any more. Past 80 & what a joy to be retired.

    Reply
  91. “Why is it that the EPO examiners on this site aren’t frothing at the mouth in anger like you are?”

    I’m only pissed because I see lawyers try to defend the bs they like to pass off as prosecution on here. Frothing at the mouth because of lost time etc when it’s the pto’s “fault” and glossing right over the only “real” cancer eating the system. Overclaiming and the instances where time is intentionally wasted. Prosecutors make mistakes, we make mistakes, but the other is just plain inexcusable.

    “The only thing your posts reveal is that – you are intentionally ignrant and arrgant and worst of all – you don’t know what you don’t know.”

    Who are you? Donald Rummie? Trust me, if they’re decided then fine, show me the case/memo and I’ll hush. You’re right, I just got into this gig a short time ago and I can’t devote my entire week to its study. Deliver for me, all wise anon of the patent world. Anon always delivers, except on this board, where anon can be relied upon to not deliver.

    “102 – “A person shall be entitled to a patent unless” to know that the PTO carries the burden – i.e., unless you carry the burden, applicant gets a patent.”

    I just explicitly said that you are technically “entitled” to a patent in that event. Now you need to read past 112 to the part about when a patent is issued by the PTO. Do you need me to recite the statute for you or are you capable of making it past 112 and finding the section yourself? I guess only gunners ever make it past the basics. Go get your book of 35 USC prole, you apparently haven’t finished.

    I’d bother with the rest of you, but I’m getting too far into flaming so I’ll spare the board. For all you bingo winners, “I’m feeling Lucky”: link to law.com. Surely we can share a lol together.

    Reply
  92. “As a simple example, anyone who knows anything about statutory construction and burden of proof need only look at the start of 102 – “A person shall be entitled to a patent unless” to know that the PTO carries the burden – i.e., unless you carry the burden, applicant gets a patent.”

    This argument has been trotted out here for the rubes a billion times. If the world was as simple as its proponents appear to believe, one should be able to file their claims and start suing people the next day. After all, the PTO has not yet met “its burden” of disproving the validity of the claims.

    But that’s not how the system works. Is the system unconstitutional?

    Go ahead. Make me laugh.

    Reply
  93. DoneThat: Perhaps I’m even thicker than 6K because I didn’t understand your reference. So I googled “gunner bingo”. First hit I got was “In Praise of Zeal” by some NY law professor, writing in Law.com. Found it to flatly contradict your rant, and vindicate 6K. I always hesitate before I call somebody else thick. They might be smarter than I have realised. Perhaps you agree with me, that rants reveal more about the ranter than the rantee? Now tell me, what makes you so sure that English common law is superior to the Roman law which most everybody else uses, and which squeezes out the tiresome behaviour that 6K finds so irksome? Instructive is to see how English common law is changing for the better, now that it’s under the umbrella of Roman law mainland Europe. As Tony Blair just said, the world’s centre of gravity is on the move. Eastwards. 6K has grasped it, others not yet.

    Reply
  94. Why did it take you guys so long to tire of 6k? I was “disciplined” by someone here many months ago for pointing out this guy’s blatant disregard of the law and fundamental and pathological misunderstanding of his profession. It seemed you guys took perverse pleasure in using his as the tool that he is. I hope you’ve learned YOUR lesson well and start ignoring his posts.

    Reply
  95. 6k –
    As everyone has wasted time explaining the basics to you, I’ll just say they are right and your arguments are mostly silly and were decided decades ago. The only thing your posts reveal is that – you are intentionally ignrant and arrgant and worst of all – you don’t know what you don’t know. You’ve drunk the kool-aid and it is probably irreversible. That is sad and disappointing.

    As a simple example, anyone who knows anything about statutory construction and burden of proof need only look at the start of 102 – “A person shall be entitled to a patent unless” to know that the PTO carries the burden – i.e., unless you carry the burden, applicant gets a patent. Of course, you’ll stick with your silly interpretations, so this is probably like trying to teach a pig to sing. BTW – this is one big reason the PTO and the patent squatters wanted to slip a 102 preamble change into patent reform.

    Same thing for the dead horse issue about official notice not being actual evidence of record. Your “analysis” would get an F on an evidence and/or administrative law exam.

    Funny thing is that every law school class has someone like you. He spouts about how the law should be, how he understands it better than all the dumb people, and how the cases should be read differently (yes, it’s almost always a “he”). Pontification and arrgance are the touchstones. Some time second semester (or for the truly obstinate, second year), he gets a lot quieter. Everyone knows it’s b/c his grades let him know he wasn’t half as smart as he thought he was. I suggest you look up phrases such as “gunner bingo” if you don’t believe me.

    Reply
  96. You know, I have noticed that a lot of my easy allowances come from primaries…

    Reply
  97. Prospector, you ask a question, namely, why aren’t EPO Examiners like 6K. Try reading the other thread, Bytes 43. Isn’t the answer there? EPO Exrs receive submissions from reps who are proud patent attorneys, yet who never went to law school, and aren’t attorneys-at-law. Makes a big difference to job satisfaction at the PTO, just who is writing the submissions on behalf of the inventor.

    Reply
  98. “chomps”, agree with pretty much all you say. But there is one point I need to correct.

    You said “I understand examiners don’t get extra time to write reply briefs, so this is also an incentive to reopen. I suspect most examiners are not of the wear-the-applicant-down view so they don’t go around the appeal-reopen wheel.”

    In actuality, the examiner does get a count for writing an examiner’s answer (it is a disposal; same count as an allowance). For reopening or sending out non-finals after the 1st one, there is no count.

    And, I do think most “examiners” don’t want to go the ‘appeal-reopen wheel”. They run into the problem, often, from SPEs or primaries that do not want to allow things. (The reject = quality mantra someone here keeps bringing up).
    The thing is with this mentality is that it is misplaced and ill considered (as well as wrong). They base this mentality on not wanting to get errors from OPQA so that the allowance error rate will be low. Thing is, OPQA only pulls, on average ONE ALLOWANCE per examiner per year (some may get 2, some none). The odds of any given case even getting pulled for review is small. They should not let this irrational fear mess with their duty, but they do. And the examiner has little recourse but to make the rejections until they become a primary (& then we have to hope they don’t get the same mentality).

    MVS

    Reply
  99. 6k, I used to think of you as merely misguided and having drank too much of the koolaid that Dudas has been passing out.

    Now I see that you are mean, nasty, spiteful, ridiculously cocky, think you know everything, and bring complete and utter shame to the PTO, the federal government, and this country.

    You are for an incredibly rude awakening if you go to law school, although I’d urge you not to because you’d likely bring shame to whatever state bar you joined.

    Why is it that the EPO examiners on this site aren’t frothing at the mouth in anger like you are?

    Reply
  100. “You epitomize what everybody hates about the government …. the belief that the government works for their own purpose and not for the people.

    A suggestion … never go into private practice. Your disdain for the people who make your job possible is something you could never hide. If hired, you would be the person that the partners hide from the client at all costs. They’ll let you write applications and perhaps prosecute them, but they would never let you anywhere close to a client.”

    PDS I hardly disdain the people who “make my job possible”. I in fact love the types of people who are doing the actual inventing in my field. I have met quite a few of them. Including some that are preeminent “innovators”. Strangely, they are about 1000x as skilled as I am in the art, yet they submit patents for things that even I can see are obvious. But in truth it’s not them who are doing the submitting. The inventors themselves I’m glad to work with and protect specifically what they invented. It’s cutting through layers of bs that SOME, but not all, of your kind create unnecessarily that pisses me off. Nothing else, and you know this.

    You can go on all day about how I’m “ignorant” and may very well be correct, but at the end of the day unless you can educate me as to why I am, in explicit, rather than some trumped up implicit terms, then it doesn’t matter.

    And you dam well misunderstand who “the people” are here: “the belief that the government works for their own purpose and not for the people.” We serve Americans as a whole by determining, based on our judgment, and our judgment alone, which applications appear to be entitled to a patent. Never forget, as you routinely do, that in your quid pro quo THERE IS ANOTHER SIDE and they want to get their “money’s worth” from their granting a certain scope of exclusive right. To that end they created an expert agency in stead of one that just rolls over and rubber stamps whatever bs you see fit to put on paper.

    “Is this fair?”

    Let’s talk about fair for a minute. Is it “fair” to the person who is practicing a completely different device/process in secret to then be “caught” by an “inventorlol’s” overclaims to an entirely different device that just happen to cover the first device? Is it “fair” to the office to have “inventorlols” just throw claims at them with no regard as to what might actually be patentable? Is that fair when the applicant is allegedly completely ignorant of the art in which they are allegedly working where they have made an exceedingly complicated design only possible to be dreamed up by a trained mind? Is it “fair” to the accused when presented with a patent that slipped through with even the slightest bit of overclaim, which was built in by the apps rep, left in? Does them merely being a manufacturer in this country make that FAIR? Please, spare me the “fair”. Life’s not fair. Get over it. In your example your role is simple, convince the IRS agent or take him/them to court. You can do nearly the exact same thing for your patent but hardly anyone does. I wonder why that is? I guess because the costs associated are much higher, closer to what the actual costs of a thorough examination probably are.

    While we’re on that subject, is it “fair” to the examiner who is taken aback by some Brilliant arguments made by the rep and then has to make a nonfinal at afterfinal? Is it “fair” that the app had 6 months to put together something brilliant to get around the rejection while the examiner had a few hours to see all 10000000 ways of looking at the piece of art? Fair? Well, it hasn’t happened to me so much yet, so I can’t say for certain, but according to some on here it happens every day. Fair? Fair? Anyone? Someone in the back?

    This system hasn’t been “fair” since the 70’s. You want to know why I’d like to be on the other side of prosecution? Because you have such a TREMENDOUS advantage that you fail to take into account when you come here to cry about losing some small portion of.

    As an aside, the IRS still owes me 1k dollars from a few years back. Still haven’t sent me the stupd form that I’m supposed to sign to get a new check. I should call them again, and again, and again. But they work for me right? Right? Riiiiight. Bush works for me and you right? HAHAHAHAHA.

    Chomps- Briefly:
    Deps, i.e. the definition of why making the most convincing rejections of the ind are not practicable.
    Gravy, i.e. the “extra”, potatoes, i.e. what you get as a baseline.
    Check it out, second common definition of guy
    link to en.wikipedia.org
    for such an educated guy you seem to not have a very good grasp on what is being said. But, then again, that’s probably a good trait for an attorney, it allows you to “play dmb” easier, since you’re probably not really playing. At least I can rest assured that my trip through law school can’t be that hard, people like yourself made it through. Oh, and hey, I’m glad to hear that you know of an examiner in a very crowded field that probably has enough art in “his” shoe in “his” office to reject your humongous overclaim 7 different ways in a few hours. That example most likely reflects more on you, or the drafter, than it does “him”.

    Reply
  101. “I, and everyone else on the board, believe your understanding is fundamentally wrong. Of course, that must mean that you are the voice of reason and the other 99% of us are mistaken. . .”

    How can I make myself more clear? I said exactly that you are currently under no obligation to do anything. And I also said that congress has finally wised up to the fact that you need to take some small portion of responsibility to not be wholly ignorant of the art when applying.

    Oh and let me be clear, I also say that you are obliged implicitly to make it appear to whomever (examiner, board, CAFC, SC) that you are entitled to a patent. If it does not appear you are entitled to one then nobody (courts or pto) is under any obligation to give you one. I’m not sure how much clearer the statute can be, or maybe you never got past 101/102/103/112? Oh, and do not forget cases that have been to the CAFC only to be shot down by judicial notice. They are a rarity for sure, but none the less, if you cannot make it appear that you are entitled to a patent then you will very likely not receive one. I’m not sure how much clearer the caselaw/statutes can make this. Any one of your 99% who believes differently apparently cannot read past 112 and/or any caselaw.

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  102. –“Why aren’t you free to bring the full force of the art at the beginning?”
    The load of horsesht you like to call “deps”. —

    Um, your original post mentioned bringing the full force of the art against the independent claim because you’d given up on the dependent claims. Saying you don’t bring the full force because of the dependent claims contradicts your original reasoning.

    –Stop. Relying. On. The. PTO. We are not here to serve you we are here to fulfill the role of an administrative agency. What service we provide is gravy, not the potatoes.”–

    In that case, I would prefer just the potatoes. Your gravy is too lumpy and salty for my taste.

    If you’re not here to provide the potatoes, what are you here for? I’m not asking examiners to bow and scrape, I’m asking them to do what they’re paid for – examine the claims and tell the applicant what they find. Don’t play hide-and-seek, don’t play gotcha.

    –we’re complaining about examiners making good rejections only after appealing to the BPAI.”
    This says it perfectly, you want more than what you are “entitled” to. —

    I’m not entitled to good rejections on my first office action? Do you really believe this? You must have been typing too fast; no examiner is this ignorant.

    –I’d like very much to see which art it is that receives more production time than they really need. After all, this guy writes up extra, he must be sitting pretty making 125%.–

    I appreciate the gender bias in your statement; the USPTO employs female examiners too. It’s TC 1600/1700, the unit that the BPAI affirms most often (i.e. they make good rejections). It’s a crowded field of art, so I suspect the examiner can spend less time searching and more time preparing the combinations.

    Also appreciating the 125% and the “extra” assumption. Perhaps this examiner is merely happy with 100%. Perhaps the examiner is taking the time to do the job right and give “all” that’s required, not “extra”. Perhaps the examiner is very experienced or very close to retirement.

    –A suggestion … never go into private practice. Your disdain for the people who make your job possible is something you could never hide. If hired, you would be the person that the partners hide from the client at all costs.–

    Follow this advice. My experience is that if the partner can’t show you to the client, they don’t hire you in the first place.
    Alternatively, go to law school first. As one author put it, you aim to be educated coming out, not going in.

    –Does this mean that appeal briefs on average are getting better; or that examination on average is getting better.–

    I suspect both. First, if original office actions are getting worse, appeal briefs can be “better” because they have more to work with. Second, if “better” examination means the examiner is willing to reopen, this is enhanced by the fact that the original office action was worse. I understand examiners don’t get extra time to write reply briefs, so this is also an incentive to reopen. I suspect most examiners are not of the wear-the-applicant-down view so they don’t go around the appeal-reopen wheel.

    Reply
  103. I looked at the statistics of appeals a while ago and I was struck by the fact that prosecution reopens after an appeal brief have been growing at +20% per year whereas examiner’s answers to appeal briefs have been growing at only 3% per year.

    In 1998 there were 3,235 examiner replies and only 698 prosecution reopens after an appeal brief. In 2005 there were 4,120 examiner’s replies (3%/yr growth) and 3,370 prosecution reopens (22%/yr growth).

    Does this mean that appeal briefs on average are getting better; or that examination on average is getting better.

    Reply
  104. 6K

    In case somebody else hasn’t said it or been unable to get it past the useless spam filter on this message board. You are an ignorant ass.

    You epitomize what everybody hates about the government …. the belief that the government works for their own purpose and not for the people.

    A suggestion … never go into private practice. Your disdain for the people who make your job possible is something you could never hide. If hired, you would be the person that the partners hide from the client at all costs. They’ll let you write applications and perhaps prosecute them, but they would never let you anywhere close to a client.

    Reply
  105. E6k, did you hear about the new law passed to benefit patent examiners?

    “135 U.S.C. 102 – Upon the filing of a request, a person is entitled to a $10,000 payment unless the IRS can show that the person has never worked as a patent examiner.”

    Unfortunately, for you, the person in charge of “examining” your request is IRSAgent6k. He denied your first request for the payment based on his finding that because in 1998 you worked as something other than a patent examiner, you are not entitled to the payment. You appealed his rejection, and the board found that he had not met his burden.

    This is not a problem for IRSAgent6k, however, since he not only has additional information that you were not employed as a patent examiner in 1998, he has similar information for 1999, 2000, 2001, 2002 . . .

    I’m sure it doesn’t bother you at all, though, since it is not your “right” (whatever that means) to receive the payment.

    Is this fair?

    Reply
  106. E6k,

    It seems that everyone, except you, understands what the Patent Office’s role is. We are entitled to a patent unless the Examiner can reject the claims, as many have said numerous times. That means we are under no obligation to do anything except request a patent, until you show us why we are not entitled to it.

    I, and everyone else on the board, believe your understanding is fundamentally wrong. Of course, that must mean that you are the voice of reason and the other 99% of us are mistaken. . .

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  107. “You can find much of it here:

    link to google.com

    I just cited 90% of the relevant art for you for every case you will ever prosecute.”

    Sweet. This will really simplify those pesky IDS’s. Thank you, e6k.

    Reply
  108. “It’s not for your giggles that you cite the art. It’s for the public record (to show what the public can do) and for the applicant’s benefit. If you’ve got the trump card prior art, just go ahead and show it. Please. ”

    And if I don’t what then? Hmmm?

    “Why aren’t you free to bring the full force of the art at the beginning?”

    The load of horsesht you like to call “deps”.

    You want some extra art right? Well I’ll tell you what, how about you stop outsourcing the act of “not being a dumarse” to the pto? After you get done doing that we’ll talk. There’s only one party in the room that is wasting huge amounts of time by not being prepared and relying wholly on the other party to prepare them. Thankfully, it seems congress has recognized this, now if they’ll drop the damages junk then we can get this to be mandated.

    I’ve said it 100 different times in 100 different ways but for your benefit here it is one more time.
    Stop. Relying. On. The. PTO. We are not here to serve you we are here to fulfill the role of an administrative agency. What service we provide is gravy, not the potatoes.

    “Make both rejections. One examiner I am familiar with generally finds five good references, then makes ten 103(a) rejections out of various combinations of them. In this thread, we patent attorneys aren’t complaining about examiners making bad rejections, we’re complaining about examiners making good rejections only after appealing to the BPAI.”

    This says it perfectly, you want more than what you are “entitled” to. Which is fine if I feel like giving it that day. But I will tell you what, allowing examiners to make “rejections” without item to iteming any but the one they feel is “best” would go a long way, but no, the examiner has to hold your hand on any rejections made.

    BTW, you claim this examiner exists that routinely does this. Don’t mind if I ask for a ser or two or name do you? He’s not you, it won’t give away your secret identity. I’d like very much to see which art it is that receives more production time than they really need. After all, this guy writes up extra, he must be sitting pretty making 125%.

    BTW, in case you didn’t hear, we have a thing that is “for the public record (to show what the public can do) and for the applicant’s benefit.” it’s called the patent archives. You can find much of it here:

    link to google.com

    I just cited 90% of the relevant art for you for every case you will ever prosecute. Look through it. No, seriously, look through it. Matter of fact, look through it before you send any horsesht overclaim to me ok? Do me a favor, then we’ll talk about me doing you favors.

    Sht, I already did you a favor, you’re welcome.

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  109. “I do make the ones I think are best, it doesn’t mean that ones I think are least best aren’t more persuasive to someone else, especially if I’ve given up getting deps and am free to bring the full force of the art against the ind without regard to deps what so ever.”

    Why aren’t you free to bring the full force of the art at the beginning?

    Does giving up getting the dependent claims mean you’ve allowed them or not?

    At what point do you decide the BPAI isn’t going to change its mind and allow the claims?

    Applicants don’t have to cite references that are merely cumulative; is there such a rule re: the USPTO? Does anyone have an idea how to stop the appeal-reopen wheel?

    “The only thing BPAI can even do is make the examiner reopen. If he does that on his own then what purpose would be served by getting the app to the BPAI? Further why on earth would you want that to happen considering our current system where you don’t get auto allow after reversal? ”

    Good point re: BPAI remedies. The answer is that if the best rejection doesn’t pass muster with BPAI, the examiner is supposed to allow the claims, not send it back to money-and-time limbo. The examiner already did his part. Even Dudas shouldn’t quibble with the BPAI’s decisions.

    “Which is the best rejection? A ivo B (or B ivo A?)? B ivo C?”

    Make both rejections. One examiner I am familiar with generally finds five good references, then makes ten 103(a) rejections out of various combinations of them. In this thread, we patent attorneys aren’t complaining about examiners making bad rejections, we’re complaining about examiners making good rejections only after appealing to the BPAI.

    “But you can forget it if you think I’m going to cite all the art that pertains to their overclaim for my own shts and giggles. ”

    It’s not for your giggles that you cite the art. It’s for the public record (to show what the public can do) and for the applicant’s benefit. If you’ve got the trump card prior art, just go ahead and show it. Please.

    I want to be shown the best, knock-em-dead, art you have because if it ever goes to litigation, the opponent will certainly show the best art to me. I want to save my client the money s/he is spending on patent prosecution if the resulting patent will be worthless. I want it on paper what the examiner looked at because it will save time in the long run deciding whether there is better art out there. I want to be able to go to the client and say, “here’s the art the examiner found, it’s killer, now we need to plan on how we will protect your investment another way.”

    What I don’t want is for the examiner to decide that the resulting patent will be very narrow in scope and therefore not worthy of getting a patent. Even narrow scope is worth something.

    Give me the art. Don’t be selfish or greedy and hoard it for yourself. Give it to the public, and the applicant, by putting it on the record.

    Take your day off, e6k. If you’re not going to give me your work product, what’s the point?

    Reply
  110. Has anyone seen a PTO sample appeal brief? If so, please post the link…

    Reply
  111. Oh, and lest I leave you with the wrong impression, yes, sometimes I make additional rejections, and I certainly try to cite the best art, and usually give more than what I’ve used to reject. But you can forget it if you think I’m going to cite all the art that pertains to their overclaim for my own shts and giggles. Not. Going. To. Happen. I want to dissuade the practice of overclaiming, not be like “hahaha, good one, do it again in your next application/response please”!

    You’ll excuse me while I get ready for work on my “day off”.

    Reply
  112. “e6k, “put it on the record” and “yes it does… or should”, above, are basically correct in what they are saying. And you are incorrect. Make your BEST rejection(s). If you are reversed at the board, your 2nd best will also go down. And you SHOULD cite all the most relevant prior art. Whether it is 1 ref or 100.

    And wasting time & money of applicant’s is our concern when IT IS OUR FAULT!! If they are wasting their money for what they are doing, it is THEIR business. When we are causing the waste because of our mistakes & inefficiencies, that IS a problem we all should be aware of & try to avoid. And continuous reopenings, etc. are OUR fault.”

    Let’s take this one at a time.

    “Make your BEST rejection(s)”

    I do make the ones I think are best, it doesn’t mean that ones I think are least best aren’t more persuasive to someone else, especially if I’ve given up getting deps and am free to bring the full force of the art against the ind without regard to deps what so ever.

    “your 2nd best will also go down”

    My 2nd-100th best will often get merely the ind and/or a few deps. If you think I’m going to write up a rejection based on all those you’re out of your mind. I have indicated however that something is very commonly known (not taking notice) and provide more than one ref’s in hopes that the applicant will see reason. If they do not, then that’s on them. It’s not my responsibility to convince them, not to say that might not be helpful. It’s my responsibility to put forth what I consider to be a prima facie case. End of story.

    “And you SHOULD cite all the most relevant prior art.”

    You just said “all” and “most relevant” in the same sentence, perhaps you could narrow it down to “all” or “most relevant”. I choose “most relevant”.

    “are OUR fault.”

    Hardly our fault, it is their responsibility to put forth an application that will, on examination, appear to be entitled to a patent if they desire a patent.

    “When we are causing the waste because of our mistakes & inefficiencies, that IS a problem we all should be aware of & try to avoid.”

    I never said we shouldn’t try to avoid those. What I said was, that their time/money is not your concern. Doing your job properly is your concern. The two things are separate, though sometimes related. Applicants waste time/money all the time ON PURPOSE without any help from me, my making a mistake is hardly responsible for the phenomena and is but a drop in the bucket. A bucket filled to overflowing with applicant’s wasting time. Cutting my time wasted down from the miniscule amount present to 0 would cause the backlog to go from 700000 or whatever to 6999998 at best. Let’s assume all examiners did this, we’re down to 6990998 or so. Man, that’s the way to solve the problem! Turn the PTO into a perfect institution! Let’s be so concerned with doing that that we might bring it up in conversation! In fact, let’s be so concerned with lowering the problems by oh, say a half that we bring it up! Nevermind that the backlog will have nothing but a mere scratch put in it even if we achieve that goal.

    You can go on and on all day, but the fact of the matter is, your argument for a utopia pto will never get around the sheer volume of time wasted by applicants trying to “get around art that they didn’t know of” etc. Ignorance of the art is no excuse, just like mistakes are no excuse in our proposed utopia. Zero, none, no argument at all. You’re wasting my time with your overclaims, get serious, look into the matter yourself if you’re ignorant of the art. Oh, but e6k new art might always pop up, or oh, but e6k it’s the office’s responsibility to search! Shove it eh? I didn’t say it doesn’t or wasn’t. What I am saying is that overclaiming to the unreasonable extent seen in my day to day existence is a colossal waste of time that making the PTO perfect in terms of errors would never come close to offsetting. And further that we live in an imperfect world, filled with imperfect people that do change their minds based on the situation around them. Live with it.

    There is no possible want for the BPAI to see the case if the examiner is reopening JD. The only thing BPAI can even do is make the examiner reopen. If he does that on his own then what purpose would be served by getting the app to the BPAI? Further why on earth would you want that to happen considering our current system where you don’t get auto allow after reversal?

    For all you people out there in lala “best rejection” land, let’s have an example.

    Claim 1. A method of making Compound X comprising providing component Z through a nozzle onto Y.

    Now, over here we have reference A that teaches a method of making Compound F by providing component E through a nozzel onto Y.

    Ref B shows a method of making Compound X by providing Z by paint brush onto Y.

    Ref C shows a method of providing the genus which Z belongs to onto other things through a nozzle.

    Which is the best rejection? A ivo B (or B ivo A?)? B ivo C? If you got overturned on A ivo B would you necessarily not want to put forth B ivo C later? Vice versa? These kinds of questions ABOUND in the patent arena. I can literally make these types of rejections all day for the ind’s I get.

    If you’re actually arguing in favor of no new grounds of rejection after reversal you’re out of your mo fin mind, or you’re looking out for your own best interests, or both.

    One last thing MVS, cont. reopenings aren’t always “our fault” as you well know sometimes the examiner can be overruled by people he doesn’t have day to day access to, but who might be “better” in terms of determining if the rejection is correct or not. And it’s not “the office’s fault” any more than it is “the examiners fault”, it is an inherent “problem” with institutions which spread out power at different levels. Solve that problem and get back to me, the world would like to know the answer.

    Reply
  113. 6K ….

    I know you become familiar with the MPEP only upon urging by those of us who have actually read it, so here is another little tidbit for you:

    MPEP 706.02:

    I. CHOICE OF PRIOR ART; BEST AVAILABLE
    Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where:

    (A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim;
    (B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or
    (C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration.

    Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.

    If you lose on your “best” reference before the board, you shouldn’t have recourse to the other 100+ pieces of prior art. If you’ve done your job properly, when applicant goes to the BPAI, the BPAI will decide the issue on the best arguments/art presented by the examiner. Thus, if the examiner is overturned, the case should proceed to allowance unless some piece of art shows up that could not have been cited earlier (i.e., an application with a filing date earlier than the application published between the time of the last rejection and the decision on appeal.)

    Not citing the best prior art, getting reversed on appeal, and then citing the better prior art (that you knew about) after the decision on appeal is abuse of discretion in my book.

    Reply
  114. “The problem identified in the comments is that an examiner can prevent the BPAI from ever seeing the application by continually reopening the application. This fact does not hasten examination for anyone, and makes it appear that an examiner is incompetent or has no good case (i.e. the appearance of impropriety). How can this problem be resolved?”

    This is not a problem in the eyes of PTO (mis)management. In fact, it’s their strategy.

    Reply
  115. e6k, “put it on the record” and “yes it does… or should”, above, are basically correct in what they are saying. And you are incorrect. Make your BEST rejection(s). If you are reversed at the board, your 2nd best will also go down. And you SHOULD cite all the most relevant prior art. Whether it is 1 ref or 100.

    And wasting time & money of applicant’s is our concern when IT IS OUR FAULT!! If they are wasting their money for what they are doing, it is THEIR business. When we are causing the waste because of our mistakes & inefficiencies, that IS a problem we all should be aware of & try to avoid. And continuous reopenings, etc. are OUR fault.

    MVS

    Reply
  116. –Just because someone on the board doesn’t agree with you that you have them with your rejection doesn’t mean that it all of a sudden appears on examination that they are entitled to a patent.–

    I disagree. An examiner is supposed to make the best rejection they can. If your best rejection doesn’t hold up at the Board, why do you think your second-best rejection would hold up at the Board?

    The problem identified in the comments is that an examiner can prevent the BPAI from ever seeing the application by continually reopening the application. This fact does not hasten examination for anyone, and makes it appear that an examiner is incompetent or has no good case (i.e. the appearance of impropriety). How can this problem be resolved?

    Reply
  117. –In my cases, I have plenty of rejections that could possibly be appealed, and then sitting right over here on the sidelines is about 100+ more pieces of EASILY found art that I could get at least the ind. with. We all have cases like this, and there is no reason to put all 100 ref’s on the record because they hardly even pertain to the “inventionlol” they pertain to the “overclaimlol”. —

    There’s plenty of reason to cite the 100+ pieces of art for the record. First, if there is overclaim, you’re signalling that fact to the applicant. Second, applicants like it when the examiner puts a lot of art on the record because if/when a patent issues, the presumption that you considered that art is helpful to the patentee.

    Do you tell the applicant what you’re willing to allow? If so, good for you. If not, why not? Most applicants are happy to take what an examiner is willing to give them and then file a continuation or divisional.

    I suspect the reason the 100+ pieces of art are not put on the record is because they don’t apply to the claims.

    I appreciate the majority of my examiners who are willing to cite all art they feel is relevant to the claims (overclaimed or not) and make the rejections they feel are warranted. Granted, I won’t agree with all five 102(b) rejections and I dislike the 103(a) rejections that are combinations of seven references (not kidding), but I prefer it to the hide-and-seek game seemingly advocated here. The more I read Patently-O, the luckier I think I must be compared to everyone else.

    Reply
  118. “Why do you expect me to be able to guess which arguments might be persuasive to said unreasonable decision maker?”

    … because I was talking about appealing to the Board from an unreasonable decision-maker (i.e., the examiner) and was talking about choosing arguments for the Board.

    Reply
  119. SF-

    If you recognize that the the person making the decision can be unreasonable:

    “But if the person “making the decision” is unreasonable in his/her interpretation of the art and his/her arguments and that person will only allow commercially insignificant claims, it’s my job to appeal.”

    Why do you expect me to be able to guess which arguments might be persuasive to said unreasonable decision maker?

    Reply
  120. “Thanks, but we’ve got it under control.”

    So 760,000+ cases in the backlog and 32+ month pedency is under control.

    “Just because someone on the board doesn’t agree with you that you have them with your rejection doesn’t mean that it all of a sudden appears on examination that they are entitled to a patent.”

    You’re beyond ridiculous.

    BTW, on your big “secret” about taking an app directly to the USDC for DC, do you never tire of displaying your ignorance? Please actually read section 145 before posting such silliness.

    Reply
  121. 6k wrote, “Perhaps one day it will dawn on you that your job is not merely to ‘get the applicant the broadest coverage to which he is entitled’ but to ‘get the applicant the broadest coverage that it will appear, on examination, to the person making the decision, that the applicant is entitled to.'”

    That dawning came along time ago — you shouldn’t assume otherwise. We often take what we can get and then, if there really is something valuable left on the table, reboot with a continuation and new arguments.

    But if the person “making the decision” is unreasonable in his/her interpretation of the art and his/her arguments and that person will only allow commercially insignificant claims, it’s my job to appeal.

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  122. “Doing otherwise, is not doing our job & it wasting our time & the applicant’s time & money.”

    This is why I’m arguing this MVS. The above about time and applicant’s time and money is not your concern. Not at all, zero, zilch, nada. Then you have allowed your job to be defined by the apps and their representatives. Your “job” is to examine the application and IF it appears on examination that they are entitled to a patent then you pass it to issue. That’s a big mother fin IF. Just because someone on the board doesn’t agree with you that you have them with your rejection doesn’t mean that it all of a sudden appears on examination that they are entitled to a patent. In my cases, I have plenty of rejections that could possibly be appealed, and then sitting right over here on the sidelines is about 100+ more pieces of EASILY found art that I could get at least the ind. with. We all have cases like this, and there is no reason to put all 100 ref’s on the record because they hardly even pertain to the “inventionlol” they pertain to the “overclaimlol”. Even so, I could be appealed, and I could be reversed. Anything could happen, though it be unlikely.

    Frankly, when I leave the office I would ha te to know that there are people who are supposed to be in charge of signing into existence potential restrictions on what I can and cannot make who were afraid to say “ok, maybe I was wrong, and maybe I need to do a more complete job on this app or get a second opinion from someone else as to what I should be doing”.

    Bottom line for you MVS, obtaining a patent is not a right, and never should be made such. An individual in this country should never have that type of unrestrained power, that is why we have trusted and appointed official agencies to USE THEIR JUDGMENT as to if it is an appropriate patent to be issued.

    Don’t get me wrong, that does not mean we are to “abuse” our “powers”. Never try to say that failing to issue a patent that it does not appear to you, on examination, that the applicant is entitled to is an abuse of power. It is what you are there to do if the situation calls for it.

    JD is as always here to tell us about what should and should not be happening by officials entrusted with the power to make the decisions for themselves. Thanks, but we’ve got it under control. Btw, the appeals specialist I do believe can overrule them. It’s up to them to convince the appeals specialist, kind of like it’s up to you to convince the examiner.

    “checkmate to the PTO and down goes practitioner! Down goes practitioner!”

    I loled.

    Reply
  123. “get sued for malpractice for not making an argument that you could have”

    So it’s no longer the rules that justify throwing in all arguments, its your own a$$? … lol … are you once bitten, twice shy?

    We serve the client best by making good arguments, not all arguments. But if you are uncomfortable identifying (or unable to identify) what arguments are good and what arguments are a waste of time or if you have a client that has unmanageable, unrealistic expectations, sure CYA, but also be sure to get them involved in the process to help them own the appeal strategy. But you better keep those waste-of-time arguments very brief because they’ll only distract and annoy the Board.

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  124. “Why are you arguing on this one? For this, the attorneys are right. The rules are simply a run around and not going to help anything at all.”

    True dat.

    “If an examiner goes to final, they should be prepared, and willing, to go to appeal. If they are not, they shouldn’t be making the final.”

    Even more truer.

    “A lot of finals that should not have been made in the 1st place.”

    Da most truest of all.

    “If you attorneys see a pre-appeal form not signed by the SPE AND another SPE/TQAS, you know that the home SPE felt strongly the rejection was right & the ‘permanent’ member was one of those that feel all rejections should be reopened on matter what.”

    So if the examiner and the home SPE think it should go up, how does the opinion of the QAS overrule? Aren’t two votes for sending up more than one vote for re-opening?

    “As for reopening after appeal, this ‘should’ not be happening regularly, but it does.”

    Correction: this “should” not be happening EVER.

    All fixed.

    Reply
  125. “Read the Boards concluding remarks that include a comment like –Applicant did not argue X. Therefore, we don’t have to consider it.– once, or get sued for malpractice for not making an argument that you could have once–, then talk.”

    In patent prosecution, can an argument be waived if the applicant does not raise it? If you didn’t raise an argument, and the board comments that you didn’t raise the argument, can’t you just file a continuation and then raise the argument? After all, the argument has not been considered, so why can’t the examiner consider it for the first time in the continuation?

    Reply
  126. Telemachus –

    Where do you see an indication that the petitions need only be filed? The language I recall is –decided before appeal–. If you see something different, it would be a great relief if you would point out the page/column and top, bottom or middle..

    Reply
  127. SF-

    Re:
    “Noting all points of disagreement is a requirement. Making every possible argument (including barely-passing-the-laugh-test arguments) isn’t. Ironically, the CYA-“No Argument Left Behind” strategy typically backfires because it undermines credibility and fails focus the Board’s attention the key issues.”

    Read the Boards concluding remarks that include a comment like –Applicant did not argue X. Therefore, we don’t have to consider it.– once, or get sued for malpractice for not making an argument that you could have once–, then talk.

    …your other comment about thinking that the Appeal fee is really 1400, discounted to 1000, overlooks the $1000 outrage, doesn’t it?

    By the way, is there any guarantee that after paying the $400 “petition” fee that the extra pages will be allowed? I don’t see that in the rules…

    Reply
  128. Say what you like about MM, but he’s got pretty good taste in music…

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  129. Tears began to fall, the writing’s on the wall!

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  130. “And its not a matter of just asking for more pages, it a matter of paying another outrageous $400 fee, all for an appeal I should not have to be making to correct errors that should not have been made. Its like paying a mechanic a second time to repair a repair that was made incorrectly. Something I’m sure you feel is reasonable and appropriate and are happy to do.”

    California’s got the most of them
    Boy, they got a host of them
    Swear t’God they got the most
    At every business on the coast
    Swear t’God they got the most
    At every business on the coast
    They got the Flakes

    Flakes! Flakes!

    They can’t fix yer brakes
    You ask ‘em, “Where’s my motor?”
    “Well it was eaten by snakes . . .”
    You can stab ‘n’ shoot ‘n’ spit
    But they won’t be fixin’ it
    They’re lyin’ an’ lazy
    They can be drivin’ you crazy
    Swear t’God they got the most
    At every business on the coast
    Swear t’God they got the most
    At every business on the coast

    …. RIP FZ

    Reply
  131. With the second office action as final action, limitations on the number of continuations, removing motivation from obviousness (KSR), etc. they squeezed us upward like a tube of toothpaste towards appeal. Thus, the number of appeals rose in 2007. Now for the pincer movement, they are putting a cap on the toothpaste tube of appeal. You can’t go forward, you can’t go upward, … checkmate to the PTO and down goes practitioner! Down goes practitioner!

    Reply
  132. By allowing a case to go to appeal, and then reopening the case without preparing an examiners answer, the examiner buys some additional time. The applicant is in a worse position since the examiner could have just issued a new non-final action, and now the applicant’s don’t have a solid record regarding the arguments presented against the final rejections. I guess if prosecution is reopened, the applicants’ arguments are deemed persuasive by default.

    But what a crock. The new rules have not fixed this problem, the examiner still “decides if the appeal should go forward.” Meaning they can reopen. I think if a case is reopened, the appeal fee should be refunded.

    Reply
  133. e6k,

    Why are you arguing on this one? For this, the attorneys are right. The rules are simply a run around and not going to help anything at all.

    The stats they give a fairly accurate (if anything, they may be optimistic).

    Pre-appeals get reopened around 50% of the time (what the reports don’t tell you is that if the case is allowed, it usually isn’t counted as “reopening”, so the # going to appeal is even smaller than the reports say).

    Also, a substantial % of cases appealed are reopened or allowed rather than going to the board (don’t have the #s off-hand).

    If an examiner goes to final, they should be prepared, and willing, to go to appeal. If they are not, they shouldn’t be making the final.

    There are 2 primary reasons for this.
    1) A lot of finals that should not have been made in the 1st place. Largely because too many SPEs (and some primaries) are afraid to allow anything. They think if they don’t allow things, they won’t get an error (1d10ts!). That is a good part of the reason the IPR error rate is around 12-15% & kickback on IPR cases from OPQA is a lot higher than that.

    2) Too many “permanent” members on pre-appeal panels (either a TQAS or SPE) regularly decide to reopen and the examiner has to fight to be able to go to appeal. If you attorneys see a pre-appeal form not signed by the SPE AND another SPE/TQAS, you know that the home SPE felt strongly the rejection was right & the “permanent” member was one of those that feel all rejections should be reopened on matter what.

    As for reopening after appeal, this “should” not be happening regularly, but it does. The rejections have to be signed by the TC director and get their OK. Some will all the time; some never.
    Personally, unless the proposed rejection is a knock-out 102 (and WHY didn’t they find it earlier??), the case should be allowed to issued. Doing otherwise, is not doing our job & it wasting our time & the applicant’s time & money.

    MVS

    Reply
  134. Regarding the petition issue, it seems like the petition need not be decided upon, but only “timely filed” Does anyone else read it differently?

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  135. Seems like Dudas hasn’t figured out that promulgating rules is not the same as passing laws (I learned that in my first year of law school). Does anyone know exactly what his role was in, for example, passing the AIPA? (listed on his Bio) This guy is in over his head. Its times like these we need folks with a few gray hairs running the show.

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  136. We talk about 14 point and 30 pages. It is beyond belief. Only govt could get away with that. What if:

    1. atty. and examiner see the other side of the argument, but both think they are on the right side of 50/50 – the atty. can choose to send it straight to appeal.
    2. atty. thinks it is a clearly erroneous rejection: a) pre-appeal request, 10 pages, best argument of broadest ind. claim, cost: $1000. b) if conferees think rejection is good to send to the board you don’t get your $1000 back and if you win at the board your case is allowed c) if conferees say “reopen” you get your $1000 back – you shouldn’t have had to pay for it anyway.
    3. Streamline the process: you can only argue the broadest ind. claim – if you win – allowed. If you lose, abandon or RCE with claim amendment or CAFC.

    Reply
  137. “It happened to me. Win on appeal.”

    Perhaps one day it will dawn on you that your job is not merely to “get the applicant the broadest coverage to which he is entitled” but to “get the applicant the broadest coverage that it will appear, on examination, to the person making the decision, that the applicant is entitled to”. When you have fully digested this, you will be an excellent rep.

    Always remember, there’s always the DC :)

    Anyone have any no’s on the rates of patents being “issued” by the DC?

    Reply
  138. “I just don’t get it… why are the procedural safeguards for due process simply being ignored? Seems an applicant can be put in an endless and expensive loop before ever reaching BPAI.”

    This is a consequence of obtaining not being a right. When you can wrap your head around that one you will be free. I will let you in on a little secret, if you ever tire of the PTO, you can take your app straight to the DC.

    Good luck with that :)

    Reply
  139. ” Instead, the examiner could conduct further search and issue a new office action.”

    It happened to me. Win on appeal. The examiner, with SPE’s mandate not to allow case, rejects based on new primary reference (which showed nothing more than the original primary) and new secondary references (which showed nothing more than the original secondary references).

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  140. “I just don’t get it… why are the procedural safeguards for due process simply being ignored? Seems an applicant can be put in an endless and expensive loop before ever reaching BPAI.”

    Well, and I think that the endless loop can potentially continue even if you reach the BPAI and get a complete reversal. It seems that the wording of 41.54 doesn’t necessarily require an examiner to issue a notice of allowance if reversed. Instead, the examiner could conduct further search and issue a new office action. As long as the rejections reversed by the BPAI aren’t repeated, then arguably the office action is still “consistent with the decision by the Board.” I recently read about an application in which this very scenario was playing out.

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  141. “Try thinking of the initial brief as having a $400 discount for keeping your brief under 30 pages and, perhaps, you won’t be so miffed that you have to pay the regular price for briefs over 30 pages.”

    Here is a man familiar with gov.

    My other post is lost to the TCP network error that plagues me.

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  142. “Throwing everything in the Brief is a REQUIREMENT”

    Noting all points of disagreement is a requirement. Making every possible argument (including barely-passing-the-laugh-test arguments) isn’t. Ironically, the CYA-“No Argument Left Behind” strategy typically backfires because it undermines credibility and fails focus the Board’s attention the key issues.

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  143. “Something I’m sure you feel is reasonable and appropriate and are happy to do.”

    Try thinking of the initial brief as having a $400 discount for keeping your brief under 30 pages and, perhaps, you won’t be so miffed that you have to pay the regular price for briefs over 30 pages.

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  144. SF-
    And its not a matter of just asking for more pages, it a matter of paying another outrageous $400 fee, all for an appeal I should not have to be making to correct errors that should not have been made. Its like paying a mechanic a second time to repair a repair that was made incorrectly. Something I’m sure you feel is reasonable and appropriate and are happy to do.

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  145. SF –
    Throwing everything in the Brief is a REQUIREMENT of the new rules. See page 32938 right most column of the Fed Reg….must address all points….

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  146. T: I don’t doubt that there may be situations (such as those which you note) where it’s difficult, if not impossible, to meet the page limit. If you really need more pages, you can ask for it. I believe, however, that longer briefs too often reflect an attorney’s poor thinking or a CYA attempt to throw everything in the brief. The USPTO shouldn’t refrain from setting a page limit just to accomodate such.

    Reply
  147. “Obviously, but even so, q=r^3 comes from “an invention is something I can word differently than the prior art lolz” instead of attorneys taking the system seriously. I notice that q=r^3 goes right out the window when the representative gets down to business in the majority of cases. You send us something stupd and you may very well get something stupd back, push for something stupd and you might hit a brick wall of procedure. Better bring your wrecking ball. As even Dudas implicitly has pointed out, q=r^3 is basically based on in its absence garbage in = garbage out.”

    So if it’s stoopid, how hard is it to reject? If it’s stoopid, why do 50+% of appeals result in re-opened prosecution?

    Is it your position that it’s too hard to stoopidly reject something stoopid? Are you stoopid or something? Or is stoopid is as stoopid does?

    Reply
  148. e6k,

    The problem is not that sending in something stoopid results in something stoopid back, it is, as pds and others have repeated pointed out, that sending in *anything* results too often in getting something stoopid back.

    And yes, there will always be attorneys trying to get something patented that should be unpatentable (note: at the direction of their client). However, under the current rules, there is much more actual incentive for examiners to game the system in the ways noted above.

    The PTO is the only entity I have ever seen that, given more people are willing to pay for its services, decides that this is a bad thing.

    Just my $.02.

    Reply
  149. SF:

    If an examiner points to 12 columns of text in a cited document and says it says A, when it does not, does one simple say in the Appeal Brief: It does not either, and pray that the Board reads all 12 columns and comes to the right conclusion, or must one provide some summary of each paragraph and explain why each paragraph doesn’t say A and that when taken together, they don’t say A?

    In Litigation, both side deal with the same constraints. On appeal, I might have to argue with a 45 or more page office action…

    Reply
  150. Also, how can you call it self-serving. The pto wants to get rid of the backlog and bpai contestations, what’s the quickest way to do that? Just allow sht left and right. Problem is, we have too much stupd sht that would get through so we can’t go with door no. 1.

    Reply
  151. “These rules are simply BPAI’s attempt to stem the rising tide of appeals that are the inevitable result of the open sewer quality of Office Actions gushing forth from an examining corps whose entire training can be summarized by “quality = reject, reject, reject.” ”

    Obviously, but even so, q=r^3 comes from “an invention is something I can word differently than the prior art lolz” instead of attorneys taking the system seriously. I notice that q=r^3 goes right out the window when the representative gets down to business in the majority of cases. You send us something stupd and you may very well get something stupd back, push for something stupd and you might hit a brick wall of procedure. Better bring your wrecking ball. As even Dudas implicitly has pointed out, q=r^3 is basically based on in its absence garbage in = garbage out.

    Reply
  152. These rules are simply BPAI’s attempt to stem the rising tide of appeals that are the inevitable result of the open sewer quality of Office Actions gushing forth from an examining corps whose entire training can be summarized by “quality = reject, reject, reject.”

    Reply
  153. I just don’t get it… why are the procedural safeguards for due process simply being ignored? Seems an applicant can be put in an endless and expensive loop before ever reaching BPAI. Since all adminstrative remedies would not have been exhausted, an applicant may never get a fair hearing on the merits of his or her case before the CAFC.

    I for one believe the rules for getting to the BPAI should be no more stringent than the rules for getting to the CAFC.

    So, who is going to file the next suit to block this self-serving set of rules? (The biotech industry did its part, now its time for the software, electronics industry to step up to the plate; after all, I am prosecuting your applications and am generally receiving poor quality examinations which stand no chance without a robust and available appeals process.)

    Reply
  154. This story helps me understood a bit better why so many Office Actions are issuing. About two and a half years ago the client and I traveled back East to interview examiners who were “handling” our applications. One of the examiners — a primary — told us (off the record) that his boss had told him that the invention was not patentable (no matter how it was claimed or what the prior art was) and that a Notice of Allowance should never issue. Since then we filed a pre-Appeal Brief, which caused the final rejection to be withdrawn and a new OA to issue including new references cobbled together again rejecting the claims. We responded. New rejections issued. We responded pointing out the claim limitations which were not taught by the prior art in each of our four independent claims, providing a paragraph or two explanation for each. We just received a final rejection wherein the examiner simply said that all of his prior rejections were repeated and only responding to our arguments for one of our four independent claims. The examiner is just following his boss’ earlier instructions to never issue a Notice of Allowance. If I had any hair left, I would pull it out.

    Reply
  155. To further one of T’s points, I have in the past filed continuations and divisionals with the same claims, claims that issued in the parent application, claims that were rejected in the parent application, etc. After having establised copendency, the preparation of the preliminary amendment began.

    Of course, 35 U.S.C. 101 prevents multiple patents from issuing with the same set of claims. Further, the doctrine of obviousness-type double patenting prevents claims from issuing which are obvious variations of one another. Still further, Applicants are obliged to disclose the identity of related cases.

    Reply
  156. T: If the rejections are ridiculous, it shouldn’t take many words to point that out. If there really is a need for more pages (e.g., lots of claims), the USPTO provides the ability to petition for more pages. Somehow litigators have been able to deal with page limits. Why can’t prosecutors?

    Reply
  157. Eurodisnae-

    Re:”Now surely, filing three separate patent applications with identical independent claims is a clear abuse of the system.”

    I don’t know what game is being played with those applications. Probably the specs were being filed in a rush because of a bar date and the intention was/is to file preliminary amendments in at least 2 of them to introduce different claims. The specification likely discloses separate inventions and if all the claims were introduced in one application, the examiner would have issued a restriction requirement, so Microsoft was/is trying to avoid the hassle and extra fees of filing divisionals by filing separate applications themselves.

    In any event, it is hardly an abuse of the system to pay 3 filing fees for the same set of claims. The system should be dancing in the street to be paid 3 times for the same job.

    Maybe Microsoft was hoping to get 3 separate prosecutions as an experiment expecting different results to make a point about ab arbitrary examination process…

    Reply
  158. SF-

    Re:”Anyone can thoughtlessly write a rambling, throw-everything-against-the-wall brief. The page limit is a good start in forcing applicants to write a tight brief, which requires clear thinking that, under the current rules, really hasn’t been necessary.”

    An arbitrary page limit, with out any consideration of how many claims are at issue and how many ridiculous rejections are applied against those claims and how long the rejections themselves are, while at the same time requiring that ALL the errors in the office action be identified and while playing a game of gotcha… is the definition of arbitrary and capricious.

    Reply
  159. “Come now pds, you know as well as I do I only reject things that have problems under the laws.”

    The problem is, which we all recognize (except for you), is that your knowledge of “the laws” is woefully incomplete and/or misguided.

    I don’t doubt that the vast majority of examiners who issued final office actions in my cases believed they were following the law. However, after my appeal brief, I have had around 50 (five – zero) cases reopened in the last 2 years or so. Of these cases that were reopened, probably 90% contained arguments that were previously presented. What all of this means is that my clients are being subject to bogus rejections that reduce the useful life of their patents and add to the cost of obtaining a patent.

    I’m not going to get into the number of allowances (or offers for allowable subject matter) I have gotten after appealing either. A substantial number of the allowances I get is because of the appeal.

    These funds, which are being wasted on responding to bogus rejections, could be used to fund R&D or obtain patents on other ideas. Remember, more patent applications mean more disclosure (which you say is good), even if the application doesn’t mature into a patent.

    The new set of Appeal Brief rules just adds to the cost of filing an Appeal Brief without addressing why the number of appeals being filed is growing. Instead of forcing examiners to do a better job in their examination, which narrows issues and leads to quicker and more focused prosecution, the new rules just make applicants jump through more hoops.

    Reply
  160. Lowly, it is Numpty fever! End of times.

    Reply
  161. “I would think one would have to purposefully ignore what is apparent to argue the contrary.”

    Bingo … you win the prize for today.

    As for 6K, he’s already won the lifetime award for extreme ignorance.

    Reply
  162. “Of course, this assumes that people will be filing appeals at the current pace. If the continuation rules package dies the death it should, people may be less inclined to appeal. However, if the likes of 6K continue to roam the halls at the USPTO with the mentality of “reject, reject, reject = quality,” then filing an appeal may be applicant’s best opportunity to get allowable claims.”

    Come now pds, you know as well as I do I only reject things that have problems under the laws.

    Either way pds, we both know your work is of such outstanding quality that no board would ever dream of not reversing the horrible horrible ol’ examiner’s decision 100% of the time regardless of any rules. I don’t really see what you’re concerned about.

    Reply
  163. E6k, I would think it goes without saying that intellectual property is developed in those areas where meaningful, strong protection is available. If such protection is not available in the U.S., there will be less development. This means less money spent on research and development, which means lost jobs, etc. I would think one would have to purposefully ignore what is apparent to argue the contrary.

    Reply
  164. “If the trend continues, or the allowance rate decreases, patent filings most likely will decrease, which can can lead to a decrease in worth of companies, which can lead to a decrease in research and development, which can lead to etc. . . .”

    You really believe that allowed patents are a “good” thing for the country. I love it. So rich. Let’s be very clear, the only thing that the country gets out of the deal that is an issued patent is disclosure of the invention to the public usable in 20 years. The pseudo monopoly that is set up is NOT good for the public at large, as recognized by economists for sea to shining sea. Couple publishing at 2 years with a 2+ year pendency and few nonpub requests and who’s making out like a bandit?

    Also, fewer filings on “inventionlols” that aren’t worth a tiny bit of extra trouble is hardly going to make the economy go down. As has been said a million times before, even the staunchest resistance by the PTO isn’t going to stop the next big thing (or even medium or small thing) from getting a patent. Go cry in a corner for all the “inovationlol” that could *possibly* be lost by having a slightly more difficult time at the board.

    Reply
  165. Some things almost – almost – make you sorry for the USPTO.

    This isn’t exactly on topic, but it does illustrate the real problems the USPTO has to deal with, which further points up the poverty of their response to the challenges they face.

    As of now, Microsoft have 8948 granted US patents and 12815 published US patent applications. Here’s claim 1 of recently published 20080134132:

    1. A method comprising: identifying an opportunity associated with designing software; providing an arbitrator/communicator who is to serve as an intermediary between an object/component driven element and a situation/scenario driven element composed of individual who are to use designed software; assembling the object/component driven element, wherein said object/component driven element includes individuals who design software; developing a metric associated with development of said software and against which design activities are to be measured; seeding one of said elements with an idea associated with the metric; and iteratively translating and communicating results from one element to another until the design process is terminated.

    Here’s what I think it means:

    A product design is developed by bouncing ideas/proposals/results between a user group and a design team until a satisfactory design is obtained or the project is abandoned. Communication between the design team and the focus group is mediated by an intermediary because they don’t talk the same language. The on-going product development is judged against some kind of benchmark. The design process is initiated by giving either the focus group or the design team some sort of idea that is somehow associated with the benchmark. The product is a software product.

    Is that really what patents are for?

    Here’s claim 1 of 20080134338:

    1. A method comprising: mapping a visual invariant to a program invariant; and discovering inputs to GUI logic that includes a user actions and a execution context to cause the program invariant to be violated.

    Now here’s claim 1 of 20080133976

    1. A method comprising: mapping a visual invariant to a program invariant; and discovering inputs to GUI logic that includes a user actions and an execution context to cause the program invariant to be violated.

    Oh they’re different all right: the second one contains one less grammatical error than the first.

    Wait, here’s 20080127341
    1. A method comprising: mapping a visual invariant to a program invariant; and discovering inputs to GUI logic that includes a user actions and an execution context to cause the program invariant to be violated.

    Now surely, filing three separate patent applications with identical independent claims is a clear abuse of the system. If it’s a common practice, which wouldn’t be apparent to anyone but the applicants and the USPTO, it maybe explains certain ones of the Tafas/Dudas claims rules. And you can’t just outlaw identical claims because the same people that are filing them could perfectly easily draft variations on a theme, so you end up with a generalised rule that’s hideously cokmplicated and impacts perfectly legitimate applicant behaviour…

    If you ask me, the Illuminati are out to break the patent system by stealth.

    Reply
  166. Anyone can thoughtlessly write a rambling, throw-everything-against-the-wall brief. The page limit is a good start in forcing applicants to write a tight brief, which requires clear thinking that, under the current rules, really hasn’t been necessary.

    Reply
  167. “Any insights on why they “cut us a break” for six months?”

    No idea, but if I have an appeal to be filed that comes even close to that date, I’m filing it before the rules go into effect.

    Another thing to consider is exactly how long before cases that meet the new rules will actually be decided by the BPAI. Based upon my experience, examiner answers usually don’t get issued until 3-4 months after the appeal has been filed. Add another 2 months for the reply brief, and maybe another 2 months for the reply brief to be noted. After the reply brief has been noted, it is about another 2-4 months before the appeal is actually docketed. Once docketed, it’ll be another 12-16 months from the date of docketing before it is decided by the BPAI. Of course, this doesn’t take into account any notice of non-compliant appeal briefs.

    This means that it’ll be around the beginning of 2011 before we start seeing decisions out of the BPAI that will give us practitioners an idea as to what is considered acceptable and what is considered deficient by the BPAI. Once the evidence is in, we practitioners (as a whole) will have a better idea as to what the BPAI is looking for. This means that that bugs will be shaken out of the system sometime around 2013.

    Of course, this assumes that people will be filing appeals at the current pace. If the continuation rules package dies the death it should, people may be less inclined to appeal. However, if the likes of 6K continue to roam the halls at the USPTO with the mentality of “reject, reject, reject = quality,” then filing an appeal may be applicant’s best opportunity to get allowable claims.

    Reply
  168. Lowly, it is true that there are allowances to be be received. However, the fact is that the U.S. Rejection Office, for the first time in recent history, rejects more applications than it allows. About 8 or 9 years ago, the allowance rate was about 75% – it is now 44%. If the trend continues, or the allowance rate decreases, patent filings most likely will decrease, which can can lead to a decrease in worth of companies, which can lead to a decrease in research and development, which can lead to etc. . . .

    I have attended more than one interview in the past quarter, in different art units, where the Examiners indicated by mandate (official or otherwise) the allowance rate is roughly 10%. These Examiners don’t realize there is a very delicate balance, and that too low an allowance rate can literally ruin the patent system. With, I believe, further dire economic consequences. We are on the brink or the start of a U.S.-led worldwide recession. Now is not the time for this continued nonsense from the PTO.

    I work in a larger law firm. I can *already see* the slow down in the filings and prosecution. If the clients continue to see little return on their patent filings, what is the natural consequence? Less filings, spend their money somewhere else. That is bad for the firm, for industry, for the country, for the world.

    Reply
  169. I thought it was a little unusual that the PTO put off the effective date for six months. Seems a long way off, particularly when you compare it to the 3 months they set for the continuation/no. of claims rule set.
    Any insights on why they “cut us a break” for six months?

    Reply
  170. I just don’t understand the PTO. These rules are obviously to discourage applicants from filing appeals.

    Why is the PTO so violently anti-patent?

    To the “sky is falling” people, though, I’d like to say it’s not quite as horrible as it seems. I’m still regularly getting cases allowed. It’s more difficult than it used to be, and generally takes at least one RCE, but it’s still doable.

    Reply
  171. This is the height of laziness and incompetence.

    Appellant has to point out where they first argued a particular point? WTF does that have to do with the merits of the argument?

    Let’s hope Translogic gets decided correctly. Maybe we can have all of these lazy APJ’s thrown out.

    Reply
  172. “how the heck am I supposed to relate to those in 30 pages of double-spaced 14-point font?”

    Arial Narrow

    “Dufas is either evil incarnate, or the reincarnation of Franz Kafka.”

    Um, let’s not slander one of modern literature’s greats, mkay? Thanks a bunch. Though, I would like to see how far we would go with the adjective Dudas-esque.

    Reply
  173. e6k, I feel sorry for you and your brethren. There was a time when examiners actually received counts for three quarters of their cases, as allowances. That made the job much easier.

    Reply
  174. I, as do many others, understand that the Office’s main objective at this point is to simply wear applicants down. The rules continue to do in fact what could not be done by statute-reduce the backlog by dissuading applicants from trying to obtain patents.

    Reply
  175. When an Examiner “re-opens prosecution”… they have already chewed up all the applicant’s time/money on a lark/grudge only actually doing their job when forced to by an applicant that happens to actually have the time/money to follow through. How many of those are there?

    Viewed in this way, an appeal is nothing but a bribe for what the application fee has already paid for: competent review of the application according to the rules.

    This is even more onerous than the continuation rules debacle.

    30 pages of 14 point font? so the typical BAPI judge is a senile Mr. Magoo that can’t remember what he just read?

    They have no shame. None.

    Reply
  176. e6k-

    RE:

    “”exactly how is this new process in “our favor” e6k?”

    If the examiner knows he cannot add any new grounds of rejection then he will be less likely to not reopen as soon as you send in your after final. Of course, this was apparently already against the rules, so idk if it actually helped you or not. ”

    Is this true? What is the incentive for the examiner not to wait and see if the applicant files an appeal brief and reopen prosecution then?

    Reply
  177. Brian-
    “I like that no new rejections are allowed during appeal. I don’t understand the complaints about that part of the new rules. What am I missing?”

    What you are missing is that this really isn’t a new limit on examiners. It is a new limit on applicants. Examiners can still present new ground of rejection. They just have to reopen prosecution to do it.

    What has been removed is the opportunity for the applicant to proceed with the appeal and have a board of people that might know what they are doing decide the issue.

    So, paying the appeal fee and meeting all the onerous appeal brief requirements is the new toll to get the examiner to actually pay attention to your arguments and provide an appropriate coherent response.

    Reply
  178. “how about fixing the friggin’ examination process so that applicants get a fair shake in front the examiners and aren’t compelled to appeal”

    Is so right! Unfortunately, this sort of reasoning seems to be the common thread behind many recent proposed changes by the USPTO. Circular reasoning, avoiding the underlying issues, dismissing applicants rights at a simple waive of their hands.

    I don’t see this being very different than the enjoined rules in that it affects substantial rights, and it is a disproportionate “solution” to demonstrably the wrong problem all together.

    Reply
  179. Federally Circuitous got it exactly right.

    They are imposing a 30 page, 14 point, double line space limit on my appeal of a 45 page final office action, charging me over 1000 bucks for the honor and forcing me to consume a large chunk of the page limit saying things I don’t want or need to say!.

    All to get their mistakes and crappy workmanship corrected. The real goal is to make appeal pointless so people will just go away.

    Were there any hints in the comments filed that someone is preparing to sue? Mr. Boundy perhaps?

    Reply
  180. I love the logic in the introduction: the number of appeals rose in 2007, so there must be a problem with the appeals rules that needs fixing. Hey, John Dufas: how about fixing the friggin’ examination process so that applicants get a fair shake in front the examiners and aren’t compelled to appeal in order to get the examiners to actually read the application and the prior art, so that applicants can get the claims they deserve?! And what if I’ve got 30 claims pending, and I need to appeal all of them – how the heck am I supposed to relate to those in 30 pages of double-spaced 14-point font? And if my petition to resolve some other issue hasn’t been decided yet, what do I do – appeal, or file a petition for an extension, at the risk of that petition being denied long after my deadline to appeal has expired?

    Dufas is either evil incarnate, or the reincarnation of Franz Kafka.

    Reply
  181. “new grounds of rejection are no longer permitted in an examiner’s answer”

    e6k:
    The issue is that no one believes this will be enforced. Hell, I have had the Appeal Board come up with totally new reasons for rejection (If the Board’s new reasons 1st appear in their ruling, I don’t get to answer them do I? I get blind-sided.)

    The relationship between the attorney’s and the PTO has deteriorated to the point that we no longer trust the PTO to even pretend to follow its own rules.
    I don’t demand perfection, just a good faith effort to follow your own rules.
    Nor do I understand where this bad faith rule making/following comes from. I see no logical reason for the PTO to act with such animosity.

    Reply
  182. “Get examiners doing a 1st action correctly & a lot of the other problems will be taken care of.”

    So, if we made the world perfect then the world would be perfect? I agree with you on that one. Coming back to our imperfect world, you and I both know how to mostly solve IPR’s, make it easy to allow cases and eliminate QR. You really believe that this is what caused the backlog? Did you not see the increase in filings matched by an increase in dependent claims matched by trainers teaching newbies to do everything by the book matched by stupider sht than ever being submitted as overclaims?

    You could be right about the rearranging, but it still presents substantial benefit to the applicant.

    “exactly how is this new process in “our favor” e6k?”

    If the examiner knows he cannot add any new grounds of rejection then he will be less likely to not reopen as soon as you send in your after final. Of course, this was apparently already against the rules, so idk if it actually helped you or not.

    Reply
  183. 6K, in this one the attorneys are right. The office is messing around with b$, piddly $h1t like this when there are a lot bigger problems to take care of in the office.

    How about solve the soaring rate of IPR errors? It is around 15%+ and is the biggest cause of all the problems (backlog, low production, etc.) Get examiners doing a 1st action correctly & a lot of the other problems will be taken care of.

    This type of rule package is like rearranging deck chairs on a sinking ship.

    MVS

    Reply
  184. exactly how is this new process in “our favor” e6k?

    Reply
  185. “I like “non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI” So you file your petition(s) and wait the six months to a year before the PTO realizes your petition hasn’t been “assigned” to be worked on. Mean while, your time to appeal goes bye-bye.”

    SUBSTANTIVE SIDE EFFECT SOMEONE CALL JUDGE C! THIS RULE IS SUBSTANTIVE IN NATURE! SOUND THE ALARM!

    “Does this create estopple?”

    One can only hope.

    “I like that no new rejections are allowed during appeal. I don’t understand the complaints about that part of the new rules. What am I missing?”

    That patent attorneys will bich and moan about literally anything changing about the process, no matter how in their favor it is.

    Reply
  186. I like that no new rejections are allowed during appeal. I don’t understand the complaints about that part of the new rules. What am I missing?

    Also, I’ve thought for a long time now that the PTO needs to require claim charts in office actions. The claim charts should map each claim element specific locations in the cited reference(s). I’ve only had one examiner give me a claim chart in the office action, and it made it so much easier than usual to understand the examiner’s position. I’m disappointed to see that the PTO seems to be moving in the opposite direction by easing the answer requirements.

    Reply
  187. I like “non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI” So you file your petition(s) and wait the six months to a year before the PTO realizes your petition hasn’t been “assigned” to be worked on. Mean while, your time to appeal goes bye-bye.

    Also I like, 30 page limit at 14 point font. Is the a double spacing requirement, font type requirement, boarder requirement, print only on front page requirement? ‘Cause if not and I need the space, yea, I’m writing in Comics Sans font.

    And what about “This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed.” Does this create estopple? Sometimes my limitation is supported in many places in the specification and sometimes in the penumbra (basically, whatever a patentee litigator can successfully argue is include within the limitation is included in the limitation).

    Reply
  188. “I really hope they are laughing about it behind closed doors.

    Tearing up from laughter, hunched over, one hand on their belly, the other on their coconspirator’s shoulder, attempting vainly to fight through the laughter and say, “we told ‘em it was to LOWER kick backs from the Board! Ahhhhahhhahahhh!””

    I loled, and I’m also going to starbucks for 12 oz of bannana nut chocolate chip cake.

    Reply
  189. Well, isn’t this a nice, how do you do!

    What yuh gotta love about the PTO is they are right outta 1984 with the “chocolate rations have been raised to 12 ounces” announcement as they hand you your 8 ounce ration!

    It’s absolutely beautiful.

    I really hope they are laughing about it behind closed doors.

    Tearing up from laughter, hunched over, one hand on their belly, the other on their coconspirator’s shoulder, attempting vainly to fight through the laughter and say, “we told ‘em it was to LOWER kick backs from the Board! Ahhhhahhhahahhh!”

    Another day, another thousand dollars. The motto of the Patent Attorney.

    e6k=DC=MM

    Reply
  190. 14 point?!?

    Can I use the Comics Sans font?

    Reply
  191. The “no new grounds in Examiner’s Answer” rule is a sham.

    The new Appeal Rule 41.39(b) provides “No new ground of rejection. An examiner’s answer shall not include a new ground of rejection.” First of all, this is illegal – it is not a “logical outgrowth” of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO’s Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply.

    Since 2001, the PTO has regarded rules of procedure as expendable, to be ignored when constraining PTO action but enforceable when applicable to constrain applicants, and Due Process is a quaint relic of some forgotten past and foreign legal system. This Notice of Final Rulemaking appears to continue the trend..

    Reply
  192. My list of terms will include “allowance” since the PTO seems not to understand what this word means ….

    Reply
  193. Repost from earlier (this is a better place to put the comment).

    I spent awhile reading the comments section …. what a joke. They take the time to address minor issues and give short shrift to many of the important questions.

    This is the new requirements for the Examiner’s Answer:

    § 41.39 Examiner’s answer.
    (a) Answer. If the examiner determines that the appeal should go
    forward, then within such time and manner as may be established by the
    Director the examiner shall enter an examiner’s answer responding to the appeal brief.
    (b) No new ground of rejection. An examiner’s answer shall not include a new ground of rejection.

    One of the problems I saw with the original proposal was that a considerable amount of new requirements were being placed on appellants yet none on the examiner (despite the benefits associated with the new changes also being applicable to the examiner). Apparently, they decided they were going to eliminate even more requirements from the examiner’s answer. Their rationale, which I won’t reproduce, is also a joke.

    The kept most of the cr@p in that they initially proposed. I could go on and on and on, but it is useless at this point.

    I will, however, make one more comment in that their ecomomic analysis as to how much additional expense this will impose in a joke. For example, on page 32969 (third column at end), the statement that the statement of facts section will not add to the appeal brief preparation cost and in many cases it will be a small cost savings. That section alone is going to suck up a lot of my time. Miss a fact necessary for your argument and you are screwed.

    Reply

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